Theme 6: Dispute Settlement and Enforcement of IP Rights by MSMEs WIPO Arbitration and Mediation Center Rome December 11, 2009 WIPO Arbitration and Mediation.
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Theme 6: Dispute Settlement and Enforcement of IP Rights by MSMEs WIPO Arbitration and Mediation Center Rome December 11, 2009
WIPO Arbitration and Mediation Center
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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 (+ 1500 mediators, arbitrators, experts) - Procedural guidance - Tailored dispute resolution services
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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
realities : mediators, arbitrators and experts that know the subject matter of the dispute and the industry and market
Flexibility Business-oriented solutions Protecting professional relationships Confidentiality Enforceability of arbitration awards WIPO Arbitration and Mediation Center
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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. 4
WIPO Arbitration and Mediation Center Rome Conference, December 11, 2009
WIPO Options
WIPO Arbitration and Mediation Center
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Recommended Clause for Mediation followed by Expedited Arbitration
•
Try mediation before arbitration, at least until
– lapse of time period "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]” • – termination
Combining the benefits
– arbitration well-prepared
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,
Expedited Arbitration Rules. Alternatively, in accordance with [specify jurisdiction] law." 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
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
WIPO Arbitration and Mediation Center
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Mediation Process
COMMENCEMENT APPOINTMENT OF MEDIATOR INITIAL CONFERENCE MEETINGS CONCLUSION
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WIPO ARBITRATION Request for Arbitration Answer to Request for Arbitration (30 days) Appointment of Arbitrator(s) Statement of Claim (30 days) Statement of Defense (30 days) Further Written Statements and Witness Statements Hearings Closure of Proceedings (9 months) Final Award (3 months) WIPO Arbitration and Mediation Center WIPO EXPEDITED ARBITRATION Request for Arbitration and Statement of Claim Answer to Request for Arbitration and Statement of Defense (20 days) Appointment of Arbitrator Hearing (maximum 3 days) Closure of Proceedings (3 months) Final Award (1 month)
•One exchange of pleadings •Shorter time limits, fixed fees •Sole arbitrator •Shorter hearings 8
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Tailored WIPO Dispute Resolution Services
•
WIPO Expedited Arbitration for AGICOA
(Association de Gestion Internationale Collective des Oeuvres Audiovisuelles)
www.wipo.int/amc/en/arbitration/agicoa/
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WIPO Mediation and Expedited Arbitration for Film and Media Disputes
www.wipo.int/amc/en/film/
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Other areas of tailored services:
- Telecommunications - Technology Transfer and Research & Development - Biodiversity - Art and Cultural Heritage
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WIPO Caseload
• •
Leading provider for Internet domain name disputes:
– +30,000 domain name disputes since 2000
+210 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
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WIPO Cases: Remedies, Value, Locations
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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:
www.wipo.int/amc/en/center/caseload
)
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WIPO Cases: Types of Procedure
Expedited Arbitration 19% Mediation 51% Arbitration 30%
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WIPO Cases: Domestic / International
Domestic 29% International 71%
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WIPO Cases: General Subject Matter
IT Law 16% Copyright 8% Trademarks 8% Other 22%
WIPO Arbitration and Mediation Center
Patents 46% 14
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WIPO Cases: Business Areas
Pharmaceuticals 13% Chemistry 2% Entertainment 10% Other 22% Information Technology 28% Mechanical 18% Luxury Goods 2%
WIPO Arbitration and Mediation Center
Life Sciences 3% 15
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Mediation
WIPO Case Results
Arbitration Not Settled 25% Pending 3% Pending 13% Settled 72% Award 39% Settled 48%
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WIPO Electronic Case Facility (‘ECAF’)
http://www.wipo.int/amc/en/ecaf/index.html
• • •
Web-based custom-created application
– For WIPO arbitration and mediation cases – By party agreement
Electronic case file
– Filing, storage, search, retrieval – Email 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
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WIPO ECAF: Case File
WIPO Arbitration and Mediation Center
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Information and Events
• Upcoming Events (
www.wipo.int/amc/en/events
): -
Singapore International Arbitration Forum 2010 "The Future of International Arbitration”,
Singapore, January 21 and 22, 2010 • • -
Conference on Resolution of Intellectual Property Disputes
, University of Geneva, Switzerland, February 8, 2010 -
WIPO Mediation Workshop
, May 6-7, 2010 -
WIPO Arbitration Workshop
, October 2010 WIPO Center Website: www.wipo.int/amc
Email:
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