WIPO Alternative Dispute Resolution (ADR) Options for Intellectual Property and Technology Cases pending before National Courts

Where intellectual property (IP) and technology disputes are pending before national courts, alternative dispute resolution (ADR) procedures can offer additional benefits in bringing such cases to a successful conclusion.

ADR may present a suitable opportunity for cases pending before national courts where the parties are willing to explore settlement or need the assistance of an expert in a technical or scientific matter. The WIPO Arbitration and Mediation Center (WIPO Center) administers cases referred to ADR by national courts as well as by other adjudicative bodies, including Intellectual Property and Copyright Offices (IPOs).

Mediation

In a mediation procedure, a neutral intermediary, the mediator, helps the parties to reach a mutually satisfactory settlement of their dispute. Any settlement is recorded in an enforceable contract.

Mediation is an efficient and cost-effective way of settling a case while preserving, and at times even enhancing, the relationship of the parties.

The principal characteristics of mediation are:

  • Mediation is a non-binding procedure controlled by the parties
  • Mediation is a confidential procedure
  • Mediation is an interest-based procedure

Parties involved in proceedings pending before national courts may submit their dispute to WIPO Mediation by filing their agreement for WIPO Mediation with the WIPO Center.

Recommended Model Submission Agreement to WIPO Mediation

“We, the undersigned parties, hereby agree to submit to mediation in accordance with the WIPO Mediation Rules the following dispute:

[brief description of the dispute]

The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language].”

Upon receiving the agreement to WIPO Mediation, the WIPO Center will contact the parties regarding the appointment of the mediator and the applicable fees. While the parties are free to identify a suitable candidate for such appointment themselves, the WIPO Center is available to assist with the provision of a shortlist of qualified candidates taking account of the requirements of the case.

Example of a dispute pending before national courts referred to WIPO Mediation:

Unilateral Request for WIPO Mediation

Parties usually use mediation through their joint adoption of a WIPO contract clause or dispute submission agreement. Where there is no mediation clause or agreement between the parties, the WIPO Mediation Rules facilitate submission of a dispute to mediation. This can also be helpful in a court environment that encourages mediation. A party that wishes to propose referring a dispute to WIPO Mediation can submit a Request for Mediation to the WIPO Center, which may then assist both parties in agreeing to use mediation.

Mediation Followed by Court Litigation

The WIPO Center’s case administration experience, national procedural laws and user feedback suggest that parties to IP disputes can be reluctant to exclude court options to resolve their IP-related disputes, including non-contractual disputes. Likewise, model R&D agreements in the development of which the WIPO Center has collaborated tend to foresee mediation followed, in the absence of a settlement, by court litigation, among other dispute resolution options.

Against this background, the WIPO Center makes available a model clause and a submission agreement providing for WIPO Mediation followed, in the absence of a settlement, by court litigation, to raise the possibility of using WIPO Mediation prior to or during court proceedings.

Arbitration

Arbitration is a procedure in which a dispute is submitted, by agreement of the parties, to one or more arbitrators who make a binding decision on the dispute. In choosing arbitration, the parties opt for a private dispute resolution procedure instead of going to court.

The principal characteristics of arbitration are:

  • Arbitration is consensual
  • The parties choose the arbitrator(s)
  • Arbitration is neutral
  • Arbitration is a confidential procedure
  • The decision of the arbitral tribunal is final and easy to enforce

Parties involved in proceedings pending before national courts may submit their dispute to WIPO Arbitration by filing their agreement for WIPO Arbitration with the WIPO Center.

Recommended Model Submission Agreement to WIPO Arbitration

“We, the undersigned parties, hereby agree that the following dispute shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules:

[brief description of the dispute]

The arbitral tribunal shall consist of [a sole arbitrator][three arbitrators]. 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].”

Upon receiving the agreement to WIPO Arbitration, the WIPO Center will contact the parties regarding the appointment of the arbitrator(s) and the applicable fees. While the parties are free to identify suitable candidates for such appointment themselves, the WIPO Center is available to assist with the provision of a shortlist of qualified candidates taking account of the requirements of the case.

The WIPO Center also offers WIPO Expedited Arbitration services, a form of arbitration that is carried out in a shortened time frame and at a reduced cost.

Example of a dispute pending before national courts referred to WIPO Arbitration:

Arbitration and the National Courts

Parties that enter into an arbitration agreement express their intention that an arbitration tribunal resolve the disputes between them, foreclosing court options.

Nevertheless, the involvement of national courts may be necessary in certain situations:

  • Before the arbitration has started (e.g., the granting of injunctions)
  • During the arbitration (e.g., regarding the taking of evidence)
  • After the award has been rendered (e.g., when a party challenges or seeks to enforce an award)

WIPO Expert Determination

Expert determination is a consensual ADR service offered by the WIPO Center in which a technical, scientific or related business issue between the parties is submitted to one or more experts who make a determination on the matter.

The principal characteristics of expert determination are:

  • Expert determination is consensual
  • The parties choose the expert(s) with relevant expertise
  • Expert determination is neutral and flexible
  • Expert determination is a confidential procedure
  • The determination of an expert is binding, unless the parties agree otherwise
  • Expert determination is a flexible procedure

Examples of matters that may benefit from expert determination include:

  • The valuation of intellectual property assets or the determination of royalty rates;
  • The interpretation of the claims of a patent;
  • The extent of the rights that are covered by a license;
  • The assessment of damages.

Parties involved in proceedings pending before national courts may submit their entire dispute or a specific technical or scientific issue to WIPO Expert Determination by filing their agreement for WIPO Expert Determination with the WIPO Center.

Recommended Model Submission Agreement to WIPO Expert Determination

“We, the undersigned parties, hereby agree to submit to expert determination in accordance with the WIPO Expert Determination Rules the following matter:

[brief description of the matter referred to expert determination]

The determination made by the expert shall [not] be binding upon the parties. The language to be used in the expert determination shall be [specify language].”

Upon receiving the Agreement to WIPO Expert Determination, the WIPO Center will contact the parties regarding the appointment of the expert and the applicable fees. While the parties are free to identify a suitable candidate for such appointment themselves, the WIPO Center is available to assist with the provision of a shortlist of qualified candidates taking account of the requirements of the case.

Contact Information

WIPO Arbitration and Mediation Center
Geneva
WIPO Arbitration and Mediation Center
Singapore
Chemin des Colombettes 34
1211 Geneva 20
Switzerland
T +4122 338 8247 or 0800 888 549
F +4122 740 3700 or 0800 888 550
Maxwell Chambers
32 Maxwell Road #02-02
Singapore 069115

T +65 6225 2129
F +65 6225 3568

General queries: arbiter.mail@wipo.int