WIPO ARBITRATION AND MEDIATION CENTER
Mediation and Arbitration at
WIPO
LLM in Intellectual Property
December 1, 2006
Ignacio de Castro
WIPO Arbitration and Mediation Center
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Arbitration and Mediation Center
• Established October 1994
• Purpose:
– to provide services for the resolution of
commercial disputes between private parties
involving intellectual property (IP) and
technology, through mediation and arbitration
• Background:
– Internationalization of creation and use of IP:
need for cross-border solutions
– Technical and specialized nature of IP: need
for specific expertise of ‘neutral’
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WIPO ARBITRATION AND MEDIATION CENTER
Roles of the WIPO Center:
• Resource center:
– IP ADR guidance, workshops, conferences,
publications
• Administering authority:
– Contract clauses and rules for IP disputes
• WIPO (Expedited) Arbitration
• WIPO Mediation
– Administration of cases
– WIPO list of arbitrators, mediators, experts
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Domain Name Dispute Resolution
.info
Sunrise
UDRP
.biz STOP
.name
ERDRP
.mobi Sunrise
Total
1999
1
-
-
-
1
2000
1,857
-
-
-
1,857
2001
1,556
1,579
53
-
3,188
2002
1,208
13,593
285
2003
1,100
-
-
2004
1,176
-
-
3
1,179
2005
1,456
-
-
1
1,457
Jan-Oct 2006
1,517
-
-
Total
9,871
15,172
338
1
15,087
-
1,100
5
5
1,522
5
25,391
4
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WIPO ARBITRATION AND MEDIATION CENTER
Uniform Domain Name Dispute
Resolution Policy
• The domain name is identical or
confusingly similar to a trademark or
service mark, and
• The domain name holder has no rights or
legitimate interest in respect of the domain
name, and
• The domain name has been registered and
is being used in bad faith.
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WIPO ARBITRATION AND MEDIATION CENTER
Mediation and Arbitration Experience
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WIPO ARBITRATION AND MEDIATION CENTER
Mediation and Arbitration Experience
• Statistics: 54 mediations, 63 arbitrations,
• Procedures in English, French and German
involving parties from 16 countries
• Subject Matter
Contractual
• Patent licenses, distribution agreements, R&D, joint
ventures, software/IT, copyright collecting societies,
trademark coexistence agreements, art marketing,
settlement agreements, etc.
Patent infringement: Later submission
• Sectors: IT/telecom, pharma/biotech, medical
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devices, consumer goods, art
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Mediation and Arbitration
30
25
20
15
10
5
0
1998
1999
2000
2001
2002
Arbitration
2003
2004
2005
2006
Mediation
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WIPO ARBITRATION AND MEDIATION CENTER
Procedures Offered: Options
WIPO CONTRACT
CLAUSE / SUBMISSION
AGREEMENT
MEDIATION
EXPEDITED
ARBITRATION
ARBITRATION
SETTLEMENT
AWARD
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WIPO ARBITRATION AND MEDIATION CENTER
Mediation and Arbitration
• Mediation: non-binding procedure in
which a neutral intermediary, the
mediator, assists the parties in reaching a
settlement of the dispute
• Arbitration: a neutral procedure in which
the dispute is submitted to one or more
arbitrators who make a binding decision
on the dispute
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WIPO ARBITRATION AND MEDIATION CENTER
Advantages
• One procedure relating to IPR protected
in several countries
• Choice of mediator, arbitrator or expert
• Flexible procedures
• Confidentiality
• Time and cost
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WIPO ARBITRATION AND MEDIATION CENTER
Advantage: Neutrality
• International disputes: avoid risk of home
court advantage, choice of:
– arbitrator / médiator
– language
– applicable law
– place of arbitration
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Mediation Clause
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 non-contractual claims, shall be submitted to
mediation in accordance with the WIPO Mediation
Rules. The place of mediation shall be [New York].
The language to be used in the mediation shall be
[English]
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WIPO ARBITRATION AND MEDIATION CENTER
Mediation Process
COMMENCEMENT
APPOINTMENT OF MEDIATOR
INITIAL CONFERENCE
MEETINGS
CONCLUSION
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Mediation Example (1)
• Patent infringement dispute
– R&D company holding patents disclosed patented
invention to manufacturer during consulting contract.
– No transfer or license of patent rights
– Manufacturer started selling products which R&D
company alleged included patented invention
– Negotiation patent license failed
– Parallel infringement proceedings in several
jurisdictions?
• Parties submitted to WIPO Mediation
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WIPO ARBITRATION AND MEDIATION CENTER
Commencement and Appointment of the
Mediator
COMMENCEMENT
APPOINTMENT OF
MEDIATOR
• Request for mediation
 Mechanics - Arts. 3-5
 Administration fee - Art. 21
 Statute of limitations
• Appointment of mediator
Parties or Center after
consultation - Art 6
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WIPO ARBITRATION AND MEDIATION CENTER
Mediation Sessions
COMMENCEMENT
• Alternatives to settlement
Risk and cost of litigation
APPOINTMENT OF
MEDIATOR
INITIAL CONFERENCE
• Interests of the parties
Use of patented technology vs.
further business
• Settlement options
Mutual interest in cooperation
MEETINGS
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WIPO ARBITRATION AND MEDIATION CENTER
Conclusion of the Mediation
• Settlement agreement
COMMENCEMENT
APPOINTMENT OF
MEDIATOR
INITIAL CONFERENCE
MEETINGS
CONCLUSION
Here:
license and agreement on further
business relationship
Total duration: 4 months
mediator’s fees: 24,000
Enforceable under contract law
But usually voluntary compliance
• Termination
Withdrawal by one or both
parties after the first meeting
Decision of the mediator
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Mediation Example (2)
• US software provider licensed software
applications to European telecom provider:
 10 named users
 WIPO Mediation followed by WIPO Expedited Arbitration
 Place mediation: Paris, applicable law: English
• Request for Mediation:
 Alleged breach of license: more than 50 users
 outstanding fees: USD 10 million
 European telecom asked to provide list of unauthorized
users
 No settlement, but issues narrowed down
 Total duration: 2 months, mediator ’s fees: USD13,000
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Arbitration Clause
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 non-contractual claims, shall be
referred to and finally determined by arbitration in
accordance with the WIPO Arbitration Rules.
The arbitral tribunal shall consist of [a sole arbitrator]. The
place of arbitration shall be [New York]. The language to be
used in the arbitral proceedings shall be [English]. The
dispute, controversy or claim shall be decided in accordance
with [New York] law.
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WIPO ARBITRATION AND MEDIATION CENTER
Enforcement Arbitral Award
• New York Convention Recognition and
Enforcement of Foreign Arbitral Awards (139
signatories): almost automatic enforcement of
awards, exceptions Art. V:
• lack of party capacity
• party was not given proper notice or was
unable to present its case
• difference not contemplated in the
submission to arbitration
• subject matter not arbitrable
• award contrary to public policy
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WIPO ARBITRATION AND MEDIATION CENTER
Two exchanges of pleadings:
•Party
autonomy
•Flexibility
•Efficiency
•Rules on
technical
evidence
•Confidentiality
provisions
1) Request
•“Testing the water”
•Statute of limitations
•Answer
2) Appointment: impartiality,
independence, challenge
3) Full Statement of Claim
•After Tribunal appointment
•Statement of Defense
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Arbitration: Example R&D
• Exclusive R&D and licensing agreement biotech
co. and pharma co.
• Alleged delays development and regulatory
approval biotech compound.
• R&D entity terminated agreement started WIPO
arbitration proceedings
• Arbitrator expert in biotech-pharmaceutical
• Two-day hearing
• Settlement agreement
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WIPO ARBITRATION AND MEDIATION CENTER
Trademarks Arbitration
• US University holds trademarks for software
in US
• Asian company holds trademarks for
hardware in Asia
• Trademark coexistence agreement includes
WIPO arbitration clause
• WIPO arbitration
• Sole arbitrator issued a preliminary award
providing that Asian company should grant a
license to the US University
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WIPO ARBITRATION AND MEDIATION CENTER
•One exchange of pleadings
•Shorter time limits
•Sole arbitrator
•Shorter hearings
•Fixed arbitrator’s fees
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Expedited Arbitration:
Flexibility
• Example I: Insurance
–
–
–
–
Both parties see urgency and agree on short deadlines
Only one issue in dispute
One day hearing
Final Award: 5 weeks
• Example II: Exclusive Patent License
–
–
–
–
–
–
Dispute involving one European patent and 5 US patents
Arbitration clause: infringement and contractual claims
Complex legal and technical issues
Business secrets, models, site visits
Eight days hearing
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Final Award: 15 months
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WIPO ARBITRATION AND MEDIATION CENTER
Mediation followed by Arbitration
• Try mediation before
arbitration
• If mediation fails:
arbitration wellprepared
"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 non-contractual claims, shall be submitted to
mediation in accordance with the WIPO Mediation Rules. The
place of mediation shall be [London]. The language to be used in
the mediation shall be [English]”
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 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
Arbitration Rules. The arbitral tribunal shall consist of [a sole
arbitrator]. The place of arbitration shall be [London]. The
language to be used in the arbitral proceedings shall be
[English]. The dispute, controversy or claim referred to arbitration
shall be decided in accordance with [English] law."
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Arbitration Schedule of Fees
(All amounts are in United States dollars)
Amount in dispute
Registration Fee
Administration Fee *
Arbitrator(s) Fees *
Any Amount
Up to $2.5 M
Over $2.5 M and up
to $10 M
Over $10 M
Up to $2.5 M
Over $2.5 M and up
to $10 M
Over $10 M
Expedited
Arbitration
$1,000
$1,000
$5,000
$ 5,000
+0.05% of amount
over $10 M up to a
maximum fee of
$15,000
Arbitration
$2,000
$2,000
$10,000
$10,000
+0.05% of amount
over $10 M up to a
maximum fee of
$25,000
$20,000
(fixed fee)
As agreed by the
$40,000 Center in consultation
(fixed fee) with the parties and
the arbitrator(s)
As agreed by the
Center in
Indicative rate(s)
consultation with
the parties and the $ 300 to $ 600 per hour
arbitrator
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WIPO ARBITRATION AND MEDIATION CENTER
Drafting Arbitration Clauses
• Examples of defective arbitration clauses
• Essential elements:
• applicable rules
• number of arbitrators
• place of arbitration
• language
• governing law
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Arbitration Clause
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 non-contractual claims, shall be
referred to and finally determined by arbitration in
accordance with the WIPO Arbitration Rules.
The arbitral tribunal shall consist of [a sole arbitrator]. The
place of arbitration shall be [New York]. The language to be
used in the arbitral proceedings shall be [English]. The
dispute, controversy or claim shall be decided in accordance
with [New York] law.
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WIPO ARBITRATION AND MEDIATION CENTER
Defective Clauses (1)
• Arbitrage à Genève.
• Any disputes shall be solved by arbitration
between the parties; failing that, arbitration in
the English language shall be conducted in
Houston, according to the Paris Convention,
which shall be final and binding upon de
parties.
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WIPO ARBITRATION AND MEDIATION CENTER
Defective Clauses (2)
• Disputes relating to patent infringement shall be
finally determined in accordance with the WIPO
Expedited Arbitration. Contractual disputes
[different institution].
• Disputes relating to US patents: US sole
arbitrator. Disputes relating to European
patents: European sole arbitrator. Award can be
challenged and finally determined by arbitration
in accordance with the WIPO Arbitration Rules.
The tribunal shall consist of three arbitrators.
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Electronic Case Facility (ECAF)
http://www.wipo.int/amc/en/ecaf/index.html
• Web-based electronic docket
– For WIPO arbitration and mediation cases
– Facilitates online communication and storage
– Submission in most common formats (word, pdf,..)
– Searchable by author, date, subject title
– Email alerts
• Security
– Authentication + Encryption + Firewall
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO ECAF Docket
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO ECAF Case Management
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO ECAF Case Management
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WIPO ARBITRATION AND MEDIATION CENTER
WIPO Arbitration and Mediation Center
• International and neutral
• Not for profit: Low fees
• Expertise:
– International legal staff with backgrounds in IP & ADR
– Worldwide contacts to expert neutrals
• Time and cost-effective administration
– Active case management
– Rules tailored to IP and IT
– Expedited Arbitration
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WIPO ARBITRATION AND MEDIATION CENTER
Information
• http://www.wipo.int
• [email protected]
• Mailing lists
http://www.wipo.int/amc/en/subscribe/
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