In 2013, the WIPO Arbitration and Mediation Center (Center) undertook a review of the WIPO Mediation, Arbitration, Expedited Arbitration and Expert Determination Rules (Rules), in consultation with a group of selected intellectual property (IP) arbitration/mediation experts from Asia, Europe and the US, including many WIPO Neutrals.
The current Rules, first promulgated in 1994 and last updated in 2002, have proven a robust yet flexible framework for the administration of the Center’s steadily growing mediation and arbitration caseload, including in complex procedural circumstances. The 2014 revision, therefore, was meant to be light, with a focus on accommodating certain external developments in arbitration law, including taking account of the 2010 revision of the UNCITRAL Arbitration Rules. In addition, the 2014 Rules seek to offer guidance to parties on Center practice that has emerged over the years, while underscoring the Center’s commitment to time and cost efficiency of proceedings conducted under its Rules. The main novelties of the 2014 Rules are summarized below.
The 2014 WIPO Mediation, Arbitration, Expedited Arbitration and Expert Determination Rules entered into effect on June 1, 2014 and - with the exception of the provisions on emergency relief (see below) - apply to all WIPO mediations, (expedited) arbitrations and expert determinations commenced on or after that date.
Disputes that involve multiple parties play a growing role in the Center’s caseload1 . To that effect, new provisions have been introduced in the 2014 Arbitration Rules and the 2014 Expedited Arbitration Rules that address the joinder of additional parties to proceedings. Reflecting Center practice, Article 46 of the 2014 Arbitration Rules / Article 40 of the 2014 Expedited Arbitration Rules confirm the availability of joinder orders by the Tribunal, but make any such order subject to agreement by all parties involved, including the additional party.
In the interest of time and cost, parties shall address a request for joinder as early as possible in the proceedings. In situations where a party acquires knowledge of relevant circumstances at a later stage of the (expedited) arbitration, it may still request a joinder within 15 days after acquiring such knowledge. The Tribunal, prior to ordering any joinder, shall take account of all relevant circumstances, including the stage reached in the proceedings to prevent unjustified delays. Unless agreed otherwise by all parties, the agreement by the additional party to join the arbitration will need to comprise that party’s agreement to any appointments of arbitrators already made in the proceedings.
The 2014 Rules introduce the Center’s power to order, under certain conditions, the consolidation of a new (expedited) arbitration with pending proceedings. In line with the practice that the Center has developed in such cases, Article 47 of the 2014 Arbitration Rules / Article 41 of the 2014 Expedited Arbitration Rules require agreement by all parties and any appointed Tribunal, as well as a substantially related subject matter or the involvement of the same parties in the new and the pending proceedings, as conditions to order consolidation. The Center also shall to take into account all relevant circumstances, including the stage reached in the proceedings.
Article 19 of the 2002 Arbitration Rules established a procedure for the Center’s appointment of the sole or presiding arbitrator in cases where such appointment has not been made by the parties. The so-called “list procedure” foresees that, in such scenario, the Center sends a list of candidates to the parties, taking into account particular qualifications that the parties may have agreed. Under the procedure, parties are then invited to number the candidates in order of preference, and return the marked lists to the Center. In principle, the Center will subsequently appoint a person from the list, taking account of the preferences and objections expressed by the parties. In the Center’s practice, the list procedure has proven an expeditious and well-balanced framework for default appointment of neutrals, and the Center has made it available to parties also in mediations and expedited arbitrations. In line with this practice, the list procedure is now expressly included in Article 6 of the 2014 Mediation Rules and Article 14(b) of the 2014 Expedited Arbitration Rules.
In addition, Article 18 of the 2014 Arbitration Rules slightly streamlines language for the appointment procedure in cases of multiple parties, and introduces additional flexibility for the Center in the context of any default appointment in this context.
In WIPO arbitrations and expedited arbitrations, the preparatory conference has proven an important catalyst for the time and cost efficiency of proceedings. To reinforce that procedure, the preparatory conference becomes a mandatory stage of the proceedings under Article 40 of the 2014 Arbitration Rules / Article 34 of the 2014 Expedited Arbitration Rules. It will need to be convened within 30/15 days after the establishment of the Tribunal.
In addition, a reference to the preparatory conference in Article 57 of the 2014 Arbitration Rules / Article 51 of the 2014 Expedited Arbitration Rules seeks to encourage the Tribunal to consider any appointment of independent experts at an early stage in the proceedings.
In line with emerging standards in national and international institutional arbitration rules, and taking note of previous WIPO work on this topic, the 2014 Rules make available the ability to parties to call upon an emergency relief procedure prior to the establishment of the Tribunal. Unless parties agree otherwise, Article 49 of the 2014 Arbitration Rules / Article 43 of the 2014 Expedited Arbitration Rules will apply only to Arbitration Agreements entered into on or after June 1, 2014. Parties retain the option to file a request for emergency relief with a judicial authority.
Article 49(b) of the 2014 Arbitration Rules / Article 43(b) of the 2014 Expedited Arbitration Rules foresee that the Center shall, upon receipt of a request for emergency relief by a party, inform the other party of the request.
Following receipt of the request for emergency relief, and proof of payment of the initial deposit2 , the Center shall promptly (normally within two days) appoint the emergency arbitrator. The Center can draw on its list of Neutrals that comprises over 1,500 arbitrators, mediators and experts from 70 countries, ranging from seasoned dispute resolution generalists to specialized practitioners and experts covering the entire legal and technical spectrum of intellectual property . Their geographical diversity suits the international character of disputes filed with the Center.3
While the 2014 Rules do not establish a strict timeline for the emergency arbitrator to order an interim measure, the emergency arbitrator is requested to conduct the proceedings in an appropriate manner, taking due account of the urgency of the proceedings. Article 49(g) of the 2014 Arbitration Rules / Article 43(g) of the 2014 Expedited Arbitration Rules recall that each party shall be given a fair opportunity to present its case, but make clear that proceedings can be conducted by telephone or on the basis of written submissions as alternatives to an in-person hearing.
By nature, the emergency relief proceedings seek to fill a vacuum in situations where a party cannot await the constitution of the Tribunal. Therefore, emergency relief proceedings are to be terminated by the emergency arbitrator if (expedited) arbitration is not commenced within 30 days from the commencement of the emergency relief proceedings. Generally, the emergency arbitrator’s powers come to end with the establishment of the Tribunal in the proceedings. If requested by a party, the Tribunal may modify or revoke any measure ordered by an emergency arbitrator.
1 Such trend towards multi-party know-how and IP arrangements in the context of technology transactions also has been found in the 2013 "WIPO Arbitration and Mediation Center International Survey on Dispute Resolution in Technology Transactions".
2 The Schedule of Fees for Emergency Relief requires an initial deposit of 10,000 USD. The emergency arbitrator’s fees are based on an hourly rate of 300 to 600 UDS per hour (indicative), capped at a maximum amount of 20,000 USD.
3 In the WIPO Center’s caseload, over 70% of cases (and over 90% of patent-related cases) have been international in scope.