1 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 Theme 6: Dispute Settlement and Enforcement of IP Rights by MSMEs WIPO Arbitration

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WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009

Theme 6: Dispute Settlement and Enforcement of IP Rights by MSMEs

WIPO Arbitration and Mediation Center

Rome December 11, 2009

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WIPO Arbitration and Mediation Center• Established in 1994 as part of WIPO• Purpose: Promotion of time and cost-effective alternative resolution of intellectual

property related disputes • Principal characteristics:

– International– Specialized in IP/technology/entertainment– Not-for-profit

• Administering Authority

- Mediation, Arbitration, Expert Determination, Domain Names• Resource Center

- Rules and clauses

- Neutrals database (+ 1500 mediators, arbitrators, experts)

- Procedural guidance

- Tailored dispute resolution services

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Why Alternative Dispute Resolution (ADR) for MSMEs?

• Cost and time efficiency of ADR• Party control:

- choice of type of procedure - adaptation of timelines to parties’ needs- choice of applicable law- choice of mediator, arbitrator, expert

• Expertise: mediators, arbitrators and experts that know the subject matter of the dispute and the industry and market realities

• Flexibility• Business-oriented solutions• Protecting professional relationships• Confidentiality• Enforceability of arbitration awards

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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 and enforceable as a contract.

• Arbitration: a procedure in which the parties submit their dispute not to a court but to one or more chosen arbitrators, for a formal decision 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 dispute or a difference between them to one or more experts who make a determination on the matter, which can be binding unless the parties have agreed otherwise.

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WIPO Options

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Recommended Clause for Mediation followed by Expedited Arbitration

• Try mediation before arbitration, at least until

– lapse of time period

– termination

• Combining the benefits

– arbitration well-prepared

"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 [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."

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Mediation Process

COMMENCEMENT

APPOINTMENT OF MEDIATOR

INITIAL CONFERENCE

MEETINGS

CONCLUSION

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WIPO ARBITRATION

Request for ArbitrationRequest for Arbitration

Answer to Request for Arbitration (30 days)

Answer to Request for Arbitration (30 days)

Appointment of Arbitrator(s)

Appointment of Arbitrator(s)

Statement of Claim(30 days)

Statement of Claim(30 days)

Statement of Defense(30 days)

Statement of Defense(30 days)

HearingsHearings

Closure of Proceedings(9 months)


Final Award (3 months)Final Award (3 months)

Further Written Statements and Witness

Statements

Further Written Statements and Witness

Statements

Request for Arbitration and Statement of ClaimRequest for Arbitration and Statement of Claim

WIPO EXPEDITED ARBITRATION

Answer to Request for Arbitration and

Statement of Defense (20 days)

Answer to Request for Arbitration and

Statement of Defense (20 days)

Appointment of Arbitrator

Appointment of Arbitrator

Hearing (maximum 3 days)

Hearing (maximum 3 days)



Final Award (1 month)Final Award (1 month)

•One exchange of pleadings•Shorter time limits, fixed fees•Sole arbitrator•Shorter hearings

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Tailored WIPO Dispute Resolution Services

• WIPO Expedited Arbitration for AGICOA (Association de Gestion Internationale Collective des Oeuvres Audiovisuelles) www.wipo.int/amc/en/arbitration/agicoa/

• WIPO Mediation and Expedited Arbitration for Film and Media Disputes www.wipo.int/amc/en/film/

• Other areas of tailored services:- Telecommunications- Technology Transfer and Research & Development- Biodiversity- Art and Cultural Heritage

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WIPO Caseload

• Leading provider for Internet domain name disputes:– +30,000 domain name disputes since 2000

• +210 mediations and arbitrations– Contractual: software/IT, R&D, patent licenses,

patent pools, distribution agreements, joint ventures, copyright collecting societies, trademark coexistence agreements, settlement agreements

– Non-contractual: patent infringement– Cases referred by courts– Confidentiality of procedures

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WIPO Cases: Remedies, Value, Locations

• Arbitration Remedies: damages, infringement declarations, specific performance

• Value: from Euro 20,000 to US$ 600 million

• Locations: parties from over 20 countries (see WIPO website at: www.wipo.int/amc/en/center/caseload)

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WIPO Cases: Types of Procedure

Mediation 51%

Arbitration30%

Expedited Arbitration

19%

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WIPO Cases: Domestic / International

Domestic29%

International71%

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WIPO Cases: General Subject Matter

IT Law16%

Patents46%

Trademarks8%

Copyright8%

Other22%

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WIPO Cases: Business Areas

Chemistry2%

Mechanical18%

Other22%

Pharmaceuticals13% Entertainment

10%

Information Technology

28%

Life Sciences3%

Luxury Goods2%

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WIPO Case Results

Mediation Arbitration

Not Settled25%

Settled72%

Pending3% Settled

48%

Pending13%

Award39%

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WIPO Electronic Case Facility (‘ECAF’)http://www.wipo.int/amc/en/ecaf/index.html

• Web-based custom-created application– For WIPO arbitration and mediation cases

– By party agreement

• Electronic case file– Filing, storage, search, retrieval

– Email alerts to all participants for each use of case file

• Case management information– Case overview, contact details

• Security

- Authentication (username, password, RSA SecurID with changing passcode)

- Encryption

- Firewall

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WIPO ECAF: Case File

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Information and Events• Upcoming Events (www.wipo.int/amc/en/events):

- Singapore International Arbitration Forum 2010 - "The Future of International Arbitration”, Singapore, January 21 and 22, 2010

- Conference on Resolution of Intellectual Property Disputes, University of Geneva, Switzerland, February 8, 2010

- WIPO Mediation Workshop, May 6-7, 2010

- WIPO Arbitration Workshop, October 2010

• WIPO Center Website: www.wipo.int/amc

• Email: [email protected]

Documents

1 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 Theme 6: Dispute Settlement and Enforcement of IP Rights by MSMEs WIPO Arbitration