1 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

2 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 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 ( mediators, arbitrators, experts) - Procedural guidance - Tailored dispute resolution services

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

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

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

6 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 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."

7 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 Mediation Process COMMENCEMENT APPOINTMENT OF MEDIATOR INITIAL CONFERENCE MEETINGS CONCLUSION

8 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 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, fixed fees Sole arbitrator Shorter hearings

9 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 Tailored WIPO Dispute Resolution Services WIPO Expedited Arbitration for AGICOA (Association de Gestion Internationale Collective des Oeuvres Audiovisuelles) WIPO Mediation and Expedited Arbitration for Film and Media Disputes Other areas of tailored services: - Telecommunications - Technology Transfer and Research & Development - Biodiversity - Art and Cultural Heritage

10 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 WIPO Caseload Leading provider for Internet domain name disputes: –+30,000 domain name disputes since 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

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

12 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 WIPO Cases: Types of Procedure

13 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 WIPO Cases: Domestic / International

14 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 WIPO Cases: General Subject Matter

15 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 WIPO Cases: Business Areas

16 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 WIPO Case Results Mediation Arbitration

17 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 WIPO Electronic Case Facility (‘ECAF’) Web-based custom-created application –For WIPO arbitration and mediation cases –By party agreement Electronic case file –Filing, storage, search, retrieval – 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

18 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 WIPO ECAF: Case File

19 WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009 Information and Events Upcoming Events ( - Singapore International Arbitration Forum "The Future of International Arbitration”, Singapore, January 21 and 22, Conference on Resolution of Intellectual Property Disputes, University of Geneva, Switzerland, February 8, WIPO Mediation Workshop, May 6-7, WIPO Arbitration Workshop, October 2010 WIPO Center Website: