Dispute Settlement Services offered by the WIPO Arbitration

Dispute Settlement Services offered by the WIPO Arbitration and Mediation Center Heike Wollgast, WIPO Arbitration and Mediation Center

2 WIPO Arbitration and Mediation Center Offices in Geneva and Singapore International dispute resolution service provider Specialized in IP and related commercial disputes Not-for-profit Commitment to time and cost effective conduct of cases Procedural guidance, training programs

Why Alternative Dispute Resolution (ADR) for IP Disputes? Internationalization of creation/use of IP Calls for cross-border solutions Technical and specialized nature of IP Calls for specific expertise of the neutral Short product and market cycles Calls for time-efficient procedures Confidential nature of IP Calls for private procedures Collaborative nature of IP creation and commercialization Calls for mechanisms that preserve relations 3

4 Limitations of IP ADR Consensual May be difficult to agree once dispute has arisen and where there is no contractual relationship between the parties Outcome binding between parties only (inter partes) No public precedent or direct office action

ADR: Mediation, Arbitration, Expert Determination Mediation: an informal procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of their dispute, based on the parties’ respective interests. The mediator cannot impose a decision. The settlement agreement has the force of a contract. Arbitration: a procedure in which the parties submit their dispute to one or more chosen arbitrators, for a binding and final decision (award) based on the parties’ respective rights and obligations and enforceable as an award under arbitral law. Expert Determination: a procedure in which the parties submit a specific matter (e.g. technical question) to one or more experts who make a determination on the matter, which can be binding unless the parties have agreed otherwise.

ADR Procedures under WIPO Rules WIPO Contract Clause/ Submission Agreement Party Agreement (Negotiation) First Step Mediation Expert Determination Determination Expedited Arbitration Settlement Arbitration Award Procedure Outcome

7 WIPO Model Clause Example: Mediation followed by Expedited Arbitration "Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as noncontractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language]” If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation within [60][90] days of the commencement of the mediation, it shall, upon the filing of a Request for Arbitration by either party, be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules. Alternatively, if, before the expiration of the said period of [60][90] days, either party fails to participate or to continue to participate in the mediation, the dispute, controversy or claim shall, upon the filing of a Request for Arbitration by the other party, be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute, controversy or claim referred to arbitration shall be decided in accordance with [specify jurisdiction] law." http://www.wipo.int/amc/en/clauses/index.html

Routes to ADR ADR contract clauses Submission Agreements, e.g. in non-contractual disputes Domestic and international Sometimes following prior court litigation between the parties Model clauses: http://www.wipo.int/amc/en/clauses/index.html

9 WIPO Cases: Types of Procedure

10 WIPO Cases: Subject Matter

11 WIPO Cases: Business Areas Other 32% Information Technology 23% 1% Chemistry 4% Luxury Goods Mechanical 10% 16% 14% Life Sciences Entertainment

12 Active WIPO Case Management «Good offices» services Initiation of procedure and subsequent case communication (option of WIPO Electronic Case Facility) Mediator/arbitrator appointment process Over 1,500 specialized neutrals 100 nationalities Mediators, arbitrators, technical experts All areas of IP/IT New neutrals added in function of specific case needs Setting fees, financial management At request, hearing/meeting logistics assistance

13 Fees and Costs – Reduction for PCT Users and Holders under the Madrid/Hague Systems

14 Settlement in WIPO-Administered Cases

WIPO ADR Services for Specific Sectors Disputes arising in a specific industry sector or for a specific subject matter may benefit from ADR procedures tailored to specific types of disputes and attendant needs Tailoring of: Clauses / submission agreements Rules Schedule of fees and costs Specialized panel of mediators, arbitrators, experts Examples: Internet domain names Research and development / technology transfer Intellectual property offices

16 WIPO ADR Services for IPOs Administration of disputes pending before IPOs WIPO panel of neutrals From around the world with IP expertise Parties are also free to select mediators, arbitrators or experts from outside the WIPO Panel Procedural Guidance and Training Advice on ADR clauses and submission agreements Organizing training and workshops Establishment of Adapted ADR Frameworks Guidance in the establishment of adapted ADR frameworks including Rules, case administration services, etc.

17 Further Information WIPO model clauses/submission agreements: http://www.wipo.int/amc/en/clauses/ Contact information, general queries and case filing: [email protected] Information on procedures, neutrals and case examples: http://www.wipo.int/amc/en/ International Survey on Dispute Resolution in Technology Transactions http://www.wipo.int/amc/en/center/survey/results.html