Model Submission Agreement
1. “We, the undersigned parties, hereby agree that the following dispute shall be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules (WIPO Rules) unless otherwise stated in this submission agreement:
The dispute concerns a FRAND adjudication relating to the Declaration[s] of [Name[s] of Company[ies]] to [Name of Standard-Setting Organization] and [list standard(s)] concerning the following representative patents (each party shall select a maximum of [specify number] patents referred to in the Declaration[s]):1
Nothing in this agreement shall prevent any party from bringing any argument or defense it chooses in the arbitration. 2
2. In making any default appointment under Article 14 of the WIPO Rules, including proposing candidates to the parties in accordance with Article 14(b) of the WIPO Rules, the WIPO Arbitration and Mediation Center (WIPO Center) shall to the extent possible draw on its list of neutrals for patents in standards.
3. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute shall be decided in accordance with the law of [specify jurisdiction].
4. The parties agree the following schedule: 3
|Request for Arbitration and Statement of Claim
(Articles 6, 10, 35 WIPO Rules)
|Appointment of the sole arbitrator
(Article 14 WIPO Rules)
|15 days after receipt of the Request for Arbitration|
|Answer to the Request and Statement of Defense
(Articles 20, 36 WIPO Rules)
|20 days after receipt of the Request for Arbitration|
(Article 41 WIPO Rules)
|15 days after appointment of the sole arbitrator|
|Claimant Reply||15 days after Statement of Defense|
|Respondent Sur-Reply||15 days after Claimant Reply|
|All Document Production Completed
(Article 44 WIPO Rules)
|30 days after Respondent Sur-Reply|
|Fact and Expert Witness Statements
(Articles 50, 51 WIPO Rules)
|30 days after Document Production|
|[Fact Witness Depositions Completed]||[30 days after Witness Statements]|
|[Rebuttal Expert Witness Statements]||[15 days after Expert Witness Statements]|
|[Expert Witness Depositions Completed]||[15 days after Rebuttal Expert Witness Statements]|
|Hearing (Article 49 WIPO Rules)||15 days after Fact and Expert Witness Statement|
5. All submissions shall be made on the specified due date via the WIPO Electronic Case Facility (ECAF).
6. An initial Preparatory Conference pursuant to Article 34 of the WIPO Rules is scheduled 15 days after the appointment of the sole arbitrator. The sole arbitrator shall draw up, in consultation with the parties, a document defining the scope of the arbitration, the methodology to be used and, if appropriate, stages of the proceedings.
7. Further to Articles 35 and 36 of the WIPO Rules, the parties shall, to the extent possible submit the documents and other evidence upon which they seek to rely concurrently with the Statement of Claim and the Statement of Defense. Supplemental documents and other evidence may be submitted concurrently with the Reply to the Statement of Defense and the Sur-Reply.
8. The arbitral tribunal shall not have the authority to issue interim injunctions under Article 42(a) of the WIPO Rules. In accordance with Article 42(b) of the WIPO Rules, the arbitral tribunal may order that a party provide security for the claim or counter-claim in an escrow account.
9. The parties shall try to informally resolve requests for production of documents and other evidence. The parties may bring requests for disclosure under Article 44(b) of the WIPO Rules only if they reach an impasse on the production of documents or other evidence. 4
10. Further to Article 50 of the WIPO Rules, the parties shall simultaneously submit sworn fact and expert witness statements for each witness of fact and each expert witness on whom they propose to rely at the Hearing pursuant to Article 49 of the WIPO Rules. Such a statement should be sufficiently detailed so as to stand as that witness’s direct testimony.
11. [The parties are permitted to depose witnesses expected to testify at the Hearing pursuant to Article 49 of the WIPO Rules in accordance with the schedule set forth above.]
12. The Hearing pursuant to Article 49 of the WIPO Rules shall be held for not more than three days.
13. The parties may file wholly or partially dispositive motions as they wish. Once filed, the arbitral tribunal shall determine if a briefing schedule is appropriate or if the motion should be stayed. The filing of any motion will not necessarily suspend or postpone the agreed schedule.”
1 Parties have the option to agree that the scope of the arbitration shall cover patents on a reciprocity basis / cross-licensing.
2 This may include patent essentiality, validity, infringement, and enforceability. Parties can also agree to limit claims or defenses that they may bring in the arbitration, including patent essentiality, validity, infringement, and enforceability. They may for example agree that such arguments may be heard but no binding decision regarding these issues may be taken by the tribunal, or that such arguments may not be heard or decided upon by the tribunal.
3 The periods of time may be reduced or extended in the course of the arbitration in accordance with Article 4(f) and (g) of the WIPO Rules. Not every stage may apply in each procedure and, in that case, the timeline shall be counted from the prior stage.
4 When requests for the production of documents relate to comparable licenses of the patents referred to in Section 1, such licenses may contain confidentiality / non-disclosure obligations. Articles 48(c)-(e) and 51 of the WIPO Rules provide mechanisms for addressing such issues including by, where appropriate, special measures of protection or the appointment of a confidentiality advisor.