1 Ignacio de Castro WIPO Arbitration and Mediation Center Solving Disputes: The Services of the WIPO Arbitration and Mediation Center WIPO-INSME Training Program May 13,

2 WIPO Arbitration and Mediation Center Established October 1994 Purpose: to promote the resolution of IP/IT disputes through arbitration and mediation Information and events On IP arbitration and mediation Mediation and (Expedited) Arbitration Rules Tailored to IP and technology disputes Not restricted to IP disputes Specialized ADR procedures (domain names)

3 WIPO Center Experience: Domain Names Leading domain name dispute provider (56%) Parties from 120 countries, 11 languages Average duration: days

4 ADR Options

5 WIPO Center Experience: Mediation and Arbitration Statistics 35 mediations 25 arbitrations Parties from 15 countries Procedures in English, French and German Subject Matter Contractual Patent licenses, trademark coexistence agreements, distribution agreements, R&D, joint ventures, software/IT Submission once dispute has arisen: Patent infringement

6 Mediation and Arbitration Case Filing

7 Mediation Elements Non-binding / party control Procedure: Parties can cease to participate after first meeting with the mediator Outcome: Not imposed but developed by the parties Based on interests of the parties Value creation Fast and efficient

8 WIPO Mediation Example R&D company disclosed patented invention to manufacturer during consulting contract. No transfer or license of patent rights Manufacturer started selling products which R&D company alleged included patented invention Negotiation of patent license failed Multinational infringement proceedings? Parties submit to WIPO Mediation

9 COMMENCEMENT APPOINTMENT OF MEDIATOR Request for mediation Mechanics - Arts. 3-5 Administration fee - Art. 21 Statute of limitations Appointment of mediator Parties or Center after consultation - Art 6 List of candidates Commencement and Appointment of Mediator

10 Mediation Sessions INITIAL CONFERENCE MEETINGS APPOINTMENT OF MEDIATOR COMMENCEMENT Alternatives to settlement Risk and cost of litigation Interests of the parties Use of patented technology vs. further business Settlement options Mutual interest in cooperation

11 Conclusion of the Mediation Settlement agreement License and agreement on further business relationship Enforceable under contract law But usually voluntary compliance Termination Withdrawal by one or both parties after the first meeting Decision of the mediator INITIAL CONFERENCE MEETINGS APPOINTMENT OF MEDIATOR COMMENCEMENT CONCLUSION

12 WIPO ARBITRATION Request for Arbitration Answer to Request for Arbitration (30 days) Appointment of Arbitrator(s) Statement of Claim (30 days) Statement of Claim (30 days) Statement of Defense (30 days) Statement of Defense (30 days) Hearings Closure of Proceedings (9 months) Closure of Proceedings (9 months) Final Award (3 months) Further Written Statements and Witness Statements Request for Arbitration and Statement of Claim WIPO EXPEDITED ARBITRATION Answer to Request for Arbitration and Statement of Defense (20 days) 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) One exchange of pleadings Shorter time limits Sole arbitrator Shorter hearings Fixed arbitrators fees Party autonomy Flexibility Efficiency Rules on technical evidence Confidentiality provisions

13 Answer to Request for Arbitration (30 days) Arbitration Proceedings Testing the water Interim measures Registration and administration fees Request for Arbitration

14 Schedule of Fees Arbitration Proceedings

15 Request for Arbitration Answer to Request for Arbitration (30 days) Party control WIPO List Impartiality and independence Default Jurisdiction of the tribunal Appointment of Arbitrator(s) Arbitration Proceedings

16 WIPO List of Neutrals 1,000 experts 100 nationalities Broad range of ADR, IP, and technical backgrounds Arbitrators fees Role of the WIPO Center

17 Further written statements Preparatory conference Arbitration Proceedings Request for Arbitration Answer to Request for Arbitration (30 days) Appointment of Arbitrator(s) Statement of Claim (30 days) Statement of Claim (30 days) Statement ofDefense (30 days) Statement ofDefense (30 days)

18 Request for Arbitration Answer to Request for Arbitration (30 days) Presentation of evidence tribunals control admissibility, disclosure Witnesses Experiments Primers and models Experts Appointment of Arbitrator(s) Statement of Defense Further Written Statements and Witness Statements Hearings Statement of Claim ( 30 days) Statement of Claim ( 30 days) Arbitration Proceedings

19 Arbitration Proceedings Award No appeal Enforcement Request for Arbitration Answer to Request for Arbitration (30 days) Appointment of Arbitrator(s) Statement of Defense Further Written Statements and Witness Statements Hearings Statement of Claim (30 days) Statement of Claim (30 days) Closure of Proceedings Final Award (3 months)

20 When is it appropriate? Statement of Claim filed with Request for Arbitration and Statement of Defense with Answer to the Request Sole arbitrator Fixed arbitrators fees for disputes up to USD 10 million Shorter hearings Time limits shortened Expedited Arbitration

21 WIPO Expedited Arbitration Case Examples Dispute inventor and manufacturer –6 US and 1 European Patents –Exclusive license, but no use –Are other products infringing? –Sole Arbitrator, eight days hearing –Business secrets, models, site visits –Final Award: 15 months Finance contract - urgent resolution needed –Shorter deadlines for party filings –One day hearing –Final Award: 6 weeks

22 WIPO Procedures Tested Rules Efficient and cost-effective administration active case management List of specialized Neutrals 1000 candidates from 70 countries Broad range of ADR, IP and technical backgrounds Worldwide contacts Institutional certainty

23 Information Mediation workshops, June 2005 Arbitration workshop, October Mailing lists