1 Theme 7: Alternative Procedures for Resolving Intellectual Property Disputes WIPO FORUM ON INTELLECTUAL PROPERTY AND SMEs FOR IP OFFICES AND OTHER RELEVANT INSTITUTIONS IN OECD COUNTRIES, HAGUE, JUNE 14-15, 2006 Eun-Joo MIN Arbitration and Mediation Center World Intellectual Property Organization (WIPO) Arbitration and Mediation Center http://arbiter.wipo.int
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1 Theme 7: Alternative Procedures for Resolving Intellectual Property Disputes WIPO FORUM ON INTELLECTUAL PROPERTY AND SMEs FOR IP OFFICES AND OTHER RELEVANT.
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Theme 7: Alternative Procedures
for Resolving Intellectual Property Disputes
WIPO FORUM ON INTELLECTUAL PROPERTY AND SMEs
FOR IP OFFICES AND OTHER RELEVANT INSTITUTIONS
IN OECD COUNTRIES, HAGUE, JUNE 14-15, 2006
Eun-Joo MINArbitration and Mediation Center
World Intellectual Property Organization (WIPO)
Arbitration and Mediation Center http://arbiter.wipo.int
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Trends in IP ADR (1)
• Internationalization of creation and use of IP rights & globalization of markets; need for cross-border solutions for disputes– Accommodate different languages, cultures,
(geographically limited) laws – Avoid litigation in several jurisdiction– Avoid home-court advantage
• Growth of complex long-term relationships; strategic alliances; need to co-exist– Licensing, cross-licensing, patent pooling
– Need for mechanisms that preserve relations
Arbitration and Mediation Center http://arbiter.wipo.int
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Trends in IP ADR (2)
• Increasingly technical and specialized nature of IP– need for specific expertise of “neutral”
• Growth of IP/technology contracts
• Closely guarded relationships: confidentiality• Highly competitive areas; short product and market cycles
– Need for time-efficient procedures
• Increasing cost of multi-front litigation; more efficient use of judicial resources
• Dispute resolution as business decisionAlternative to ADR?
Routine IP litigation on a multi-country front
Arbitration and Mediation Center http://arbiter.wipo.int
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Trends in IP ADR (3) • UK
– “The [U.K.] Patent Office will be actively encouraging parties to consider mediation as a way of resolving their dispute. To this end, Hearing Officers will specifically consider whether mediation would be a better option whenever it receives requests to initiate litigation proceedings at the Office.”
• Spain– Trademark Act, Art. 28: “Interested parties may submit any
disputes that arise during trademark prosecution to arbitration…”; Mediation in opposition proceedings
Arbitration and Mediation Center http://arbiter.wipo.int
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Trends in IP ADR (4)
• U.S.– Patent Act (35 USC 294: “A contract involving a patent or any
right under a patent may contain a provision requiring arbitration of any dispute relating to patent validity or infringement arising under the contract. […] Any such provision or agreement shall be valid, irrevocable, and enforceable, except for any grounds that exist at law or in equity for revocation of a contract.”
• Switzerland– Federal Office of Intellectual Property holds that arbitral
tribunals are empowered to decide on validity of patents, trademarks and designs.
Arbitration and Mediation Center http://arbiter.wipo.int
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Arbitration and Mediation (1)
• Party control / autonomy / consensual
• Flexibility : “à la carte”
• Expertise– Party selection of neutrals; tailored appointment
• Less adversarial than court litigation– Restore a working business relationship
Arbitration and Mediation Center http://arbiter.wipo.int
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Arbitration and Mediation (2)• Single Procedure
– Multi-jurisdictional disputes in one proceeding
– No jurisdictional problems
– Time & cost effective (WIPO Arb Rules, Art 38)
• Arbitration: finality / enforceability of awards– New York Convention
with limited exceptions (e.g. denial of due process), “automatic” enforcement of arbitral awards
137 signatories
– inter-partes effect
• Mediation: commercial solutions
Arbitration and Mediation Center http://arbiter.wipo.int
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WIPO Arbitration and Mediation Center
• Time & cost efficient resolution of IP and technology disputes, between private parties, away from court
• Established in 1994 as part of international bureau of WIPO
• Procedures– Mediation
– (Expedited) Arbitration
– Mediation followed, in the absence of a settlement, by arbitration
– Expert Determination
– Domain Name Dispute Resolution
Arbitration and Mediation Center http://arbiter.wipo.int
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WIPO Arbitration and Mediation Options
Arbitration and Mediation Center http://arbiter.wipo.int
WIPO CONTRACT CLAUSE /
SUBMISSION AGREEMENT
MEDIATION
SETTLEMENT ARBITRATION EXPEDITED ARBITRATION
AWARD
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Recommended WIPO Mediation Clause
“Any dispute (…) shall be submitted to mediation in accordance with WIPO Mediation Rules. The place of mediation shall be […]. The language to be used in the mediation shall be […].”
Arbitration and Mediation Center http://arbiter.wipo.int
Recommended WIPO Arbitration Clause
“Any dispute, (…) shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators][a sole arbitrator]. The place of arbitration shall be […]. The language to be used in the arbitral proceedings shall be […]. The dispute, controversy or claim shall be decided in accordance with the law of […].”
Arbitration and Mediation Center http://arbiter.wipo.int
Commencement
Appointment of Mediator
Initial Conference
Meetings
Conclusion
Request for Mediation (Art 3-5); Fees Art 21)
Role of the mediator (Art 13); Appointment (Art 6-7)
Conduct of the mediation (Art 9-12)
Set up the first meeting; Agree on preliminary exchange of document, if any
Agree on ground rules of the process; Gather information and identify issues; Explore the interests of the parties; Develop options for settlement; Evaluate options
– Business secrets, models, site visits (protective orders)
– 12 procedural orders, 2 preliminary awards
– eight-day hearing
– Final Award: 15 months
Arbitration and Mediation Center http://arbiter.wipo.int
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Mediation followed by Arbitration
• Try mediation before arbitration, at least until
– lapse of time period
– termination
• Combining the benefits
– arbitration well-prepared
Arbitration and Mediation Center http://arbiter.wipo.int
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Expert Determination
• Accommodate expeditious resolution of disputes between parties, concerning an issue of limited scope (e.g. royalty rate dispute) or clarification of certain technical or scientific issues by a neutral third party
• More informal, flexible and expeditious than arbitration
– e.g. WIPO Arb Rules Arts 48-52: special rules on experiments, site visits, agreed primers and models, trade secrets and confidential information, protective orders, confidentiality advisor
• Model contract clauses
• List of neutrals (arbitrators, mediators, experts)
Arbitration and Mediation Center http://arbiter.wipo.int
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Role of the WIPO Center as an Administering Authority (2)
• Competitive fees
• Efficient and cost-effective case administration– Establishment of the Tribunal, challenges, support in
appointment of experts, management of fees and costs
• Hearing facilities– Free of charge in Geneva and Singapore