1 WIPO Staff Briefing, WIPO Arbitration and Mediation Center, June 19, 2009 WIPO Staff Briefing June 19, 2009 WIPO Arbitration and Mediation Center Erik

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WIPO Staff Briefing, WIPO Arbitration and Mediation Center, June 19, 2009

WIPO Staff BriefingJune 19, 2009

WIPO Arbitration and Mediation Center

Erik Wilbers

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Presentation Outline• Objective• Role• Why Consider IP ADR?• Results

– WIPO-administered arbitration and mediation cases– WIPO UDRP-based domain name cases

• WIPO Strategic Goals• Staff and Structure• Information Technology• Challenges• Looking Ahead

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Center Objective

• WIPO– To promote the protection of IP throughout the world

(WIPO Treaty)

• Center– To contribute to the productive use of IP assets through the provision of quality

dispute-resolution services that involve the minimum dislocation for IP assets under dispute, and to enhance the framework for the protection of IP in the Internet domain name system (Proposed P&B 2010/11)

• In other words– Rights only being useful if you can enforce them, IP owners and users require

effective dispute resolution tools

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Center Role• To provide information about, and case services for, the resolution

of commercial disputes between private parties involving IP and technology, through procedures other than court litigation (‘ADR’)– Resource institution

– Administering authority

• Principal ADR procedures– Mediation

– (Expedited) Arbitration

– Expert Determination

– ‘Administrative’ procedures

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Resource Institution

• Producing and providing guidance about IP ADR– Stakeholder queries

– Workshops and conferences

– Website and publications

• Providing policy input and designing special ADR procedures for particular types of IP disputes, e.g.– Domain name policies (e.g. national domains, expansion domain name system)

– Recurring disputes in specific IP sectors

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Administering Authority

• Managing ADR dispute procedures based on clauses designating the Center• Under WIPO Rules, and under non-WIPO Rules

(e.g. UDRP for domain names)• Case management elements include:

• Procedural guidance for parties• Appointment of neutrals• Communicating with parties and neutrals• Facilitating hearings• Fee management• Online filing options (WIPO ECAF)

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WIPO ECAF Online Case File

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Why IP ADR? International

• IP rights are often created, exploited and protected internationally, and so IP disputes often involve parties and/or commerce in multiple jurisdictions

• By offering a single international forum, ADR can help avoid issues sometimes associated with court litigation – Jurisdictional competence– Consistency of results– Time and cost, especially of foreign litigation

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Why IP ADR? Neutral Expertise

• IP disputes tend to be technical/specialized

• Many courts are not specialized in IP

• In ADR, parties control selection of neutral(s), including expertise in the relevant legal, technical or business area

• WIPO Center List of Neutrals

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Why IP ADR? Efficiency

• IP covers fast-evolving technology, used in highly competitive markets

• Disputes can interfere with timely and full exploitation of such IP

• ADR offers party control over dispute process, including timelines, procedure, law, language, plus final, enforceable results

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Why IP ADR? Confidentiality

• Confidentiality is often essential in IP, especially in technology– Except where public precedent is needed

• Unlike public court litigation, ADR is a private mechanism

• ADR (e.g. WIPO Rules) helps to preserve confidentiality regarding existence, disclosures and result of case

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Why IP ADR? Party Relationships

• IP often developed and exploited in long-term relationships between partners– Industry, SME’s, universities

• ADR is a private procedure agreed by the parties and adapted to their needs in terms of process and remedies

• Mediation is particularly suitable, as it is less contentious and accommodates not only party rights but also party interests

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Why Not IP ADR? Limitations

• Contractual (consensual) basis– No obligation to submit to ADR procedure without contract clause– Unsuitable for bad-faith infringement (e.g. counterfeiting)

• Parties must pay fees of neutrals

• Outcome binding between the parties themselves, but no public precedent

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WIPO-Administered Arbitration and Mediation Cases

• 198 (most received in last five years) (excluding referrals and ‘bons offices’)

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

• Some examples of transactions: patent licenses, R&D agreements, software/IT, trademark coexistence and other settlement agreements, as well as patent infringement

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WIPO-Administered Arbitration and Mediation Cases:

International vs. Domestic

International 61 %

Domestic 39 %

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Types of Procedure

Mediation 54 %

Arbitration 28 %

Expedited Arbitration

18 %

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Subject Matter

Patents 44 %

Other 22 %

IT/Telecoms 18 %

Trademarks 8 %

Copyright 8 %

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Business Areas

Mechanicals

18%

IT/ Telecom

29%

Luxury Goods

2%

Other

22%

Life Sciences

4%

Entertainment

9%

Chemistry

2%

Pharmaceuticals

14%

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Settlement Rates

Settlement in WIPO Arbitration

Settled 53 % Award 43 %

Pending 4 %

Settlement in WIPO Mediation

Settled 69 %

Not Settled 25 %

Pending 6 %

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WIPO UDRP-based Domain Name Cases

0

500

1000

1500

2000

2500

1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

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Top 25 WIPO UDRP Country FilingCountry Number of Cases Percentage of CasesUnited States of America 6720 43.15%France 1686 10.83%United Kingdom 1175 7.55%Germany 894 5.74%Switzerland 787 5.05%Spain 722 4.64%Italy 501 3.22%Canada 312 2.00%Netherlands 295 1.89%Australia 276 1.77%Sweden 225 1.44%Japan 177 1.14%Denmark 159 1.02%India 157 1.01%Brazil 136 0.87%Austria 121 0.78%Mexico 106 0.68%Turkey 106 0.68%Finland 90 0.58%Monaco 74 0.48%China 71 0.46%Belgium 70 0.45%Republic of Korea 68 0.44%Ireland 58 0.37%Singapore 45 0.29%

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Areas of WIPO UDRP Complainant Activity

Sports; 2.45%Biotechnology and Pharmaceuticals;

9.76%

Luxury Items; 1.75%Transportation;

3.57%

Heavy Industry and Machinery; 3.96%

Electronics; 4.25%

Automobiles; 4.33%

Telecom; 4.84%

Other; 5.46%

Banking and Finance; 9.31%

Internet and IT; 8.73%

Retail; 8.10%

Food, Beverages and Restaurants;

7.17%

Entertainment; 6.60%

Insurance; 1.72%

Hotels and Travel; 5.71%

Media and Publishing; 6.27%

Fashion; 6.03%

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WIPO Strategic Goals

• Principally serving WIPO Goal II: Provision of Premier Global IP Services

• Also contributing towards other WIPO Goals, including:– WIPO Goal VI: International Cooperation on Building Respect for

IP– WIPO Goal VII: Addressing IP in Relation to Global Policy Issues

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Staff and Structure

• 1.4% of WIPO budget

• 38 team members (CAM building)– Secretariat– Case Managers– Senior Lawyers– IT, publications and event support staff– 27 nationalities from all continents

• 4 Sections– IP Dispute Management (Mr. de Castro, Head)– Legal Development (Ms. Min, Head) – Information and External Relations (Mr. Rattray, Head)– Domain Name Dispute Resolution (‘vacant’)

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Information Technology• Databases

– UDRP-based domain name case management– Online legal index– Country-code top level domains– Temporary procedures (‘Sunrise’)– Arbitration and mediation cases– Tailored schemes initiatives– Neutrals– ‘ECAF’: web-based case file

• Web site– 48,000 pages– Over 3 million page views in 2008

• Email– 1 million in UDRP cases– Daily decision subscription

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Challenges

• Running and upgrading case operations at the same time

• Resource management: balancing staff and funding levels with dynamic demand

• As a market-oriented service, achieving synergies with other parts of our public organization

• Mixture of case and policy work that must respond to fast-moving developments in the Domain Name System

• Extensive competition in ADR, involving many established providers with captive domestic markets

• Center being ‘Geneva-based’, broadening its potential ‘appeal’ to other regions (e.g. Asia)

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Looking Ahead (Arbitration, Mediation, Expert Determination)

• Upgrading infrastructure, e.g.– Next generation ECAF– Expert determination guidance

• Exploration/development of tailored schemes, e.g.– AGICOA – Art and cultural heritage– Biodiversity, life sciences– Film industry– Research collaboration and technology transfer– Telecommunications

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Looking Ahead (Domain Names)

• Upgrading UDRP infrastructure– WIPO e-UDRP Initiative– Jurisprudential overview– Index review

• Domain name policy proposals and system design for IP protection in ICANN New gTLD Program, including:– Rights Protection Mechanism (RPM), a rapid suspension

option complementing UDRP– ‘Post-delegation’ Dispute Resolution Procedure for

Registries (and possibly Registrars)

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Thank You!

• [email protected]

Documents

1 WIPO Staff Briefing, WIPO Arbitration and Mediation Center, June 19, 2009 WIPO Staff Briefing June 19, 2009 WIPO Arbitration and Mediation Center Erik