WIPO ADR for SEP/FRAND Disputes
In recent years, the WIPO Arbitration and Mediation Center (the “WIPO Center”) has administered some 95 disputes relating to standard essential patents (SEPs) and fair, reasonable and non-discriminatory (FRAND) licensing negotiations. Under the WIPO Mediation Rules, the mediator facilitates licensing negotiations to help parties agree on FRAND licensing terms (“Deal Mediation”). In WIPO FRAND mediations where parties wish to involve an expert or a co-mediator with specific expertise (e.g., concerning essentiality, patent valuation), the WIPO Center is also available to assist with such appointment (including from its list of neutrals for patent standards).
- Mediations between large SEP holders and implementers in Asia and Europe to facilitate the agreement of FRAND licensing/cross-licensing terms, often in connection with pending litigation in multiple jurisdictions.
- Requests for WIPO Mediation relating to licensing negotiations between patent pool administrators and implementers in relation to ongoing unsuccessful patent licensing negotiations. These cases included parties from 21 jurisdictions (50% of cases involved parties based in Asia including China, India, Japan and the Republic of Korea). Some of these mediation requests prompted renewed licensing negotiations, prior to the appointment of the mediator.
- Referral of SEP/FRAND cases to WIPO Mediation by IP courts in China, including parties from Europe and Asia.
WIPO ADR Services for SEP/FRAND Disputes
Model submission agreements
The WIPO Center makes available tailored model submission agreements that parties may use to refer a dispute concerning the determination of fair, reasonable and non-discriminatory (FRAND) terms to WIPO Mediation, WIPO Arbitration, WIPO Expedited Arbitration or WIPO Expert Determination. The WIPO model submission agreements seek to ensure a cost- and time-effective FRAND determination and have been developed further to a series of consultations conducted by the WIPO Center with leading patent law, standardization and arbitration experts from a number of jurisdictions. The WIPO Center also took into account comments made by some members and the Secretariat of the European Telecommunication Standards Institute (ETSI). The following options are available:
WIPO Mediation options:
- WIPO Mediation for FRAND Disputes
- In the absence of a mediation agreement: Unilateral Request for WIPO Mediation for FRAND Disputes
- WIPO Mediation Pledge by SEP holders to IoT SMEs
WIPO Arbitration options:
WIPO Expert Determination option:
Multi-tier model submission agreements:
The WIPO model submission agreements build on the standard WIPO Mediation, Arbitration, Expedited Arbitration and Expert Determination Rules and propose a set of optional FRAND-specific features. The WIPO model submission agreements can be adapted by parties in line with their needs. They also can be adapted for use in WIPO contract clauses. The WIPO Center is available to assist parties in such exercise upon request.
To facilitate submission of FRAND disputes to WIPO ADR, the WIPO Center has published the document WIPO ADR Options for FRAND Dispute Management and Resolution. It aims at helping parties and neutrals to understand and make use of procedural options that are available at different stages of the process.
To facilitate submission of FRAND disputes to WIPO ADR, the WIPO Center has published the document WIPO ADR Options for FRAND Dispute Management and Resolution. It aims at helping parties and neutrals to understand and make use of procedural options that are available at different stages of the process.
WIPO Open-Ended List of Neutrals Specialized in SEP/FRAND Disputes
Effective proceedings to a large extent depend on the quality of the mediator, arbitrator or expert. The WIPO Center maintains a special list of mediators, arbitrators and experts for patent standards.
These neutrals can be appointed by parties in cases under the WIPO Rules, but parties are also free to select mediators, arbitrators or experts from outside the WIPO Open-Ended List of Neutrals Specialized in SEP/FRAND Disputes.
These neutrals can be appointed by parties in cases under the WIPO Rules, but parties are also free to select mediators, arbitrators or experts from outside the WIPO Open-Ended List of Neutrals Specialized in SEP/FRAND Disputes.
Selected resources
Multimedia resources
- WIPOD – WIPO ADR for Standardized Technology and Patent Licensing Disputes (Episode 5)
- USPTO-WIPO Webinar: Standard Essential Patents (SEP): Use of ADR for SEP Disputes
- USPTO-WIPO Webinar: Standard Essential Patents (SEP) / FRAND Disputes: How SMEs can utilize Mediation
- CIPO-WIPO Webinar on Standard Essential Patents and Dispute Resolution
- WIPO Webinar: FRAND Disputes: Court Jurisdiction vs ADR
Articles
- LESI – Les Nouvelles - WIPO ADR Procedures To Resolve FRAND and SEP Disputes
- Law Society of Singapore Gazette: How to Use WIPO Deal Mediation in Commercial Negotiations
- WIPO Magazine: Arbitration and mediation: resolving patent licensing disputes in the world of standardized technology
- WIPO Magazine: FRAND licensing for SMEs: dancing with elephants in the world of SEPs
WIPO SEP resources
Contact us
WIPO Arbitration and Mediation Center (Geneva)
34, chemin des Colombettes
1211 Geneva 20
Switzerland
T +4122 338 8247
F +4122 740 370
WIPO Arbitration and Mediation Center (Singapore)
Maxwell Chambers
28 Maxwell Road #02-14
Singapore 069120
T +65 6225 2129
F +65 6225 3568
For additional information ard.info@wipo.int