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1 WIPO ARBITRATION AND MEDIATION CENTER www.wipo.int www.wipo.int Ignacio de Castro WIPO Arbitration and Mediation Center February, 2008 Arbitration of Intellectual Property and Technology Disputes

WIPO ARBITRATION AND MEDIATION CENTER 1 Ignacio de Castro WIPO Arbitration and Mediation Center February, 2008 Arbitration of Intellectual

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WIPO ARBITRATION AND MEDIATION CENTER

www.wipo.intwww.wipo.int

Ignacio de CastroWIPO Arbitration and Mediation Center

February, 2008

Arbitration of Intellectual Property and Technology Disputes

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WIPO ARBITRATION AND MEDIATION CENTER

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WIPO Arbitration and Mediation Center

• Established 1994• Statistics

Over 26,000 domain name procedures 69 mediations over 100 arbitrations

• Subject MatterContractual: Patent licenses, distribution

agreements, R&D, joint ventures, software/IT, copyright collecting societies, trademark coexistence agreements, settlement agreements…

Court proceedings between parties

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WIPO ARBITRATION AND MEDIATION CENTER

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Dispute Resolution

• Globalization: IP international registration and licensing

• Enforcement IP country by country

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WIPO ARBITRATION AND MEDIATION CENTER

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Country Characteristic of Legal System Average Length Average Cost

France - Civil Law - Unified Litigation - No specialized courts

First Instance: 18-24 months Appeal: 18-24 months

€80,000-150,000 (1st Inst.)

Germany - Civil Law - Bifurcated Litigation - Specialized court for invalidity

First Instance: 12 months Appeal: 15-18 months

€50,000 (1st Inst.) €70,000 (App.)

Italy - Civil Law - Unified Litigation - Specialized courts

First Instance: few months – 24 months Appeal: 18-24 months

€50,000-150,000 (1st Inst.) €30,000-70,000 (App.)

Spain - Civil Law - Unified Litigation - Commercial Courts

First Instance: 12 months Appeal: 12-18 months

€100,000 (1st Inst.) €50,000 (2nd Inst.)

UK - Common Law - Unified Litigation - Specialized courts - Mediation promoted

First Instance: 12 months Court of Appeal: 12 months House of Lords: 24 months

€750,000-1,500,000 (1st Inst.) €150,000-1,500,000 (App.) €150,000-1,500,000 (House of Lords)

China - Civil Law - Bifurcated Litigation - Specialized courts

First Instance: 6 months (in law) Appeal: 3 months, no limit when foreigners litigate

Not Available

Japan - Civil Law - Bifurcated Litigation - Specialized courts

First Instance: 14 months Appeal: 9 months

Not Available

USA - Common Law - Unified Litigation - Specialized court of appeals (CAFC) - Jury trial available - Mediation promoted

First Instance: up to 24 months Appeal: 12 + months

Up to $4,000,000 (1st Inst.) $150,000-250,000 (App.)

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WIPO ARBITRATION AND MEDIATION CENTER

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U.S. Litigation Expense

$0.00

$1'000'000.00

$2'000'000.00

$3'000'000.00

$4'000'000.00

$5'000'000.00

$6'000'000.00

Copyright Trademark TradeSecret

Patent

< 1m

1 - 25m

> 25m

AIPLA Economic Survey 2005

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WIPO ARBITRATION AND MEDIATION CENTER

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Dispute Resolution

• National Courts: – Different legal systems– Expensive– Risk contradictory results

• Possible Solutions:– Brussels Convention– EPLA– Consolidation court procedures: Voda v Cordis

(CAFC, February 2007)– Increase international mediation and arbitration

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WIPO ARBITRATION AND MEDIATION CENTER

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WIPO Center: Options

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WIPO ARBITRATION AND MEDIATION CENTER

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Mediation v. Arbitration

• Mediation: a non-binding procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of a 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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Mediation followed by 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 [ ]. 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 [ ]. 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 [ ] law."

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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 [ ]. The language to be used in the mediation shall be [English].

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Mediation

• Consensual• Non-binding• Confidential• Limited risk

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WIPO ARBITRATION AND MEDIATION CENTER

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Mediation Process

COMMENCEMENT

APPOINTMENT OF MEDIATOR

INITIAL CONFERENCE

MEETINGS

CONCLUSION

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Choosing a Mediator or Arbitrator (1)

• WIPO List of Mediators and Arbitrators+1000 Mediators, Arbitrators and Expertspatents, trademarks, copyright, IT industry expertisedetailed profiles

• WIPO Mediation: mediator agreed by the parties, appointed by

Center after consultation with parties Art. 6

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WIPO ARBITRATION AND MEDIATION CENTER

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Choosing a Mediator or Arbitrator (2)• WIPO Arbitration:

Number of arbitrators 1 or 3 (Art. 14)Sole arbitrator:

Appointed jointly by parties (Art. 16). If parties cannot agree: List Procedure (Art. 19).

Three arbitrators (Art. 17): Claimant appoints an arbitrator in its Request for

Arbitration Respondent appoints an arbitrator in its Answer to

the RequestTwo party-appointed arbitrators appoint the presiding

arbitrator

• The Center is able to assist the parties to identify the best candidates for their dispute

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Conclusion of the Mediation

• Settlement agreementOften license agreementTotal duration: 2-4 monthsmediator’s fees: USD 10-30 K80% cases

• TerminationWithdrawal by one or both

parties after the first meetingDecision of the mediator

INITIAL CONFERENCE

MEETINGS

APPOINTMENT OF MEDIATOR

COMMENCEMENT

CONCLUSION

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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 [ ]. The language to be used in the arbitral proceedings shall be [English]. The dispute, controversy or claim shall be decided in accordance with [ ] law.

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WIPO ARBITRATION AND MEDIATION CENTER

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Arbitration

• Consensual• Binding• No Appeal• New York Convention 1958• Result inter partes

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WIPO ARBITRATION AND MEDIATION CENTER

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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)

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

Two exchanges of pleadings:

1) Short notice: Request

•“Testing the water”

•Statute of limitations

•Answer

2) Full Statement of Claim

•After Tribunal appointment

•Statement of Defense

•Party autonomy

•Flexibility

•Efficiency

•Rules on technical evidence

•Confidentiality provisions

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WIPO ARBITRATION AND MEDIATION CENTER

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WIPO Arbitration Example (1)• Settlement agreement: exclusive patent license

between Asian patent holder and large US manufacturer

• US, European, Asian patents

• WIPO Arbitration clause, sole arbitrator US patents, sole arbitrator patents in rest of the world

• Appointment process

• Preliminary claim construction

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WIPO ARBITRATION AND MEDIATION CENTER

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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

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WIPO ECAF Docket

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WIPO ARBITRATION AND MEDIATION CENTER

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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)

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)

Closure of Proceedings(3 months)

Closure of Proceedings(3 months)

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

•One exchange of pleadings

•Shorter time limits

•Sole arbitrator

•Shorter hearings

•Fixed fees

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WIPO ARBITRATION AND MEDIATION CENTER

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WIPO Arbitration Schedule of Fees

Amount in dispute Expedited Arbitration

Arbitration

Registration Fee Any Amount $1,000 $2,000Administration Fee * Up to $2.5 M $1,000 $2,000

Over $2.5 M and up to $10 M

$5,000 $10,000

Over $10 M $ 5,000+0.05% of amount

over $10 M up to a maximum fee of

$15,000

$10,000+0.05% of amount

over $10 M up to a maximum fee of

$25,000

Arbitrator(s) Fees * Up to $2.5 M $20,000(fixed fee)

Over $2.5 M and up to $10 M

$40,000(fixed fee)

Over $10 M As agreed by the Center in

consultation with the parties and the

arbitrator

As agreed by the Center in consultation with the parties and

the arbitrator(s)

Indicative rate(s)$ 300 to $ 600 per hour

(All amounts are in United States dollars)

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WIPO ARBITRATION AND MEDIATION CENTER

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Information

• http://www.wipo.int

[email protected]

• Mailing lists

http://www.wipo.int/amc/en/subscribe/index.html