A Current View of IP ADR
APAA 63rd Council Meeting
Penang
November 9, 2014
Erik Wilbers, Director, WIPO Arbitration and Mediation Center, Geneva
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World Intellectual Property Organization
Arbitration and Mediation Center
Facilitates the resolution of commercial disputes between
private parties involving IP and technology, through
procedures other than court litigation (alternative dispute
resolution: ADR)
Offices in Geneva and Singapore
ADR of IP disputes requires a specialized ADR provider
WIPO neutrals experienced in IP and technology - able to
deliver informed results efficiently
Non-profit WIPO fee structure
International neutrality
Services include mediation, arbitration, expedited
arbitration, expert determination
Erik Wilbers - WIPO Arbitration and Mediation Center
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Mediation, Arbitration, Expert Determination
Mediation: informal consensual process in which a neutral intermediary,
the mediator, assists the parties in reaching a settlement of their dispute,
based on the parties’ respective interests. The mediator cannot impose
a decision. The settlement agreement has force of contract. Mediation
leaves open available court or agreed arbitration options.
Arbitration: consensual procedure in which the parties submit their
dispute to one or more chosen arbitrators, for a binding and final
decision (award) based on the parties’ respective rights and obligations
and enforceable under arbitral law. As a private alternative, arbitration
normally forecloses court options.
Expert Determination: consensual procedure in which the parties
submit a specific matter (e.g. technical question) to one or more experts
who make a determination on the matter, which can be binding unless
the parties have agreed otherwise.
Erik Wilbers - WIPO Arbitration and Mediation Center
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WIPO ADR Options
WIPO Contract Clause/
Submission Agreement
Party Agreement
(Negotiation)
First Step
Mediation
Expert
Determination
Determination
Expedited
Arbitration
Settlement
Erik Wilbers - WIPO Arbitration and Mediation Center
Arbitration
Award
Procedure
Outcome
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WIPO Case Subject Matter
and Business Areas
Subject Matter
Business Areas
Luxury
Goods
4%
Copyright
8%
Other
21%
Trade
mark
15%
Other
23%
Patent
39%
IT
32%
Mechanic
Life
al
Sciences
16%
14%
IT Law
17%
Entertain
ment
10%
Erik Wilbers - WIPO Arbitration and Mediation Center
Chemistry
1%
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Typical IP Transactions in WIPO Cases
Patent licenses
Software and other information technology
Research and development agreements
Trademark coexistence agreements
Patent pools
Distribution agreements
Joint ventures
Copyright collecting societies
IP settlement agreements
(Non-contractual infringement of IP rights)
Erik Wilbers - WIPO Arbitration and Mediation Center
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WIPO Mediation Example (I)
Patent infringement dispute
R&D company holding patents disclosed patented
invention to Asian manufacturer during consultancy
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
Erik Wilbers - WIPO Arbitration and Mediation Center
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WIPO Mediation Example (II)
WIPO appointed an experienced mediator with expertise
in the subject matter of the dispute
Parties and mediator met during one week
Settlement agreement reached, including grant of license
for royalties, and a new consultancy agreement
Process duration: 4 months
Mediator fees: USD 24,000
Erik Wilbers - WIPO Arbitration and Mediation Center
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WIPO Arbitration Example (I)
Asian inventor granted exclusive license over a European
patent and five US patents to US manufacturer
Clause provided that disputes whether royalties had to be
paid in respect of products manufactured by US party be
resolved through WIPO Expedited Arbitration
US party rejected claim that its products embodies
technologies covered by the licensed patents and refused
to pay royalties
Erik Wilbers - WIPO Arbitration and Mediation Center
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WIPO Arbitration Example (II)
Inventor initiated WIPO case
Center appointed sole arbitrator under WIPO Expedited
Arbitration Rules
Arbitrator had to consider whether products infringed the
‘claims’ asserted for each of the patents and whether
patents had been anticipated by prior art
Complex legal and technical issues
Business secrets, models, site visits
Eight days hearing
Final award in 15 months
Erik Wilbers - WIPO Arbitration and Mediation Center
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Why Consider IP ADR?
Internationalization of creation/use of IP
Calls for cross-border solutions
Technical and specialized nature of IP
Calls for specific expertise of the neutral
Short product and market cycles
Calls for time-efficient procedures
Confidential nature of IP
Calls for private procedures
Collaborative nature of IP creation and commercialization
Calls for mechanisms that preserve relations
Erik Wilbers - WIPO Arbitration and Mediation Center
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Source: WIPO statistics database, April 2014
Erik Wilbers - WIPO Arbitration and Mediation Center
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Source: WIPO statistics
database, April 2014
Erik Wilbers - WIPO Arbitration and Mediation Center
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WIPO 2013 International Survey on Dispute
Resolution in Technology Transactions
Oceania, 3%
8%
South America, 8%
Japan 5%
Singapore 2%
China 2%
Other Asian Countries 6%
North America, 21%
Europe, 52%
52%
15%
Brazil 2%
Colombia 2%
Other South American Countries 4%
Asia, 15%
Africa, 1%
Germany 11%
France 7%
Switzlerland 7%
United Kingdom 6%
Spain 6%
Italy 3%
The Netherlands 2%
Other European Countries 11%
21%
Place of Survey Respondent
Business Operations
3%
1%
http://www.wipo.int/amc/en/center/survey/results.html
Government Body, 3%
3%
3%
United States of America 17%
Canada 2%
Other North American Countries 1%
Other, 3%
Law Firm (for client), 52%
Type of Survey Respondent
24%
52%
7%
Individual / Self Employed, 7%
6%
Research Organization, 6%
5%
University, 5%
Company, 24%
Erik Wilbers - WIPO Arbitration and Mediation Center
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Scope of Agreements: Parties/Technology
91% of respondents conclude agreements with
parties from other jurisdictions.
+80% of respondents conclude agreements
relating to technology patented in multiple
jurisdictions.
Erik Wilbers - WIPO Arbitration and Mediation Center
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Top Ten Considerations in Choice of
Dispute Resolution Clause
Domestic Contracts
International Contracts
Costs – 71%
Costs – 71%
Time – 59%
Time – 57%
Quality Outcome – 44%
Enforceability – 53%
Confidentiality – 33%
Quality Outcome – 44%
Enforceability – 33%
Neutral Forum – 36%
Business Solution – 30%
Confidentiality – 32%
Neutral Forum – 18%
Business Solution – 29%
None in Particular – 9%
Support Provided by Institution – 9%
Setting Precedent – 6%
None in Particular – 6%
Support Provided by Institution – 6%
Setting Precedent – 5%
Erik Wilbers - WIPO Arbitration and Mediation Center
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How Are Technology Disputes Resolved?
Erik Wilbers - WIPO Arbitration and Mediation Center
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Relative Time and Cost of Technology
Dispute Resolution
Erik Wilbers - WIPO Arbitration and Mediation Center
WIPO Recommendations from Survey
Results
Contracting on technology should anticipate disputes
Dispute policy should prepare for likelihood of international
aspect in parties, rights, and law
Dispute policy should be designed to minimize time and
cost, more than other considerations
Dispute policy should include mediation
Between arbitration and court litigation, consider arbitration
as the faster and cheaper option
When choosing arbitration, subject to dimension of dispute,
consider expedited versions
In non-contractual disputes, there is scope for greater use
of party negotiation and mediation
Erik Wilbers - WIPO Arbitration and Mediation Center
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Tailored WIPO ADR for Specific Sectors
Internet domain names
Information and communication technology
Research and development/technology transfer
Patents in standards (FRAND disputes)
Intellectual Property Offices
Trade fairs
Erik Wilbers - WIPO Arbitration and Mediation Center
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More Information about WIPO ADR
wipo.int/amc
arbiter.mail@wipo.int
WIPO Center Office in Geneva
WIPO Headquarters
+41 22338 8247
WIPO Center Office in Singapore
Maxwell Chambers
+65 6225 2129
Erik Wilbers - WIPO Arbitration and Mediation Center