1. 1 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva LESI Meeting Manila June 7-10, 2009 Alternative Dispute Resolution in Intellectual Property and the WIPO Experience Erik Wilbers WIPO Arbitration and Mediation Center

2. 2 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Arbitration and Mediation Center Purpose: –To provide information about, and case services for, the resolution of commercial disputes between private parties involving intellectual property (IP) and technology, through procedures other than court litigation (‘ADR’) Principal characteristics: –International No ‘home turf’ –Specialized in IP/technology Institution Procedural rules/clauses Neutrals –Not-for-profit

3. 3 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Mediation, Arbitration, Expert Determ. 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 private 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. 4 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Source: Kluwer Law

5. 5 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Intellectual Property Litigation Expense (U.S.) AIPLA Economic Survey 2005 (M. Partridge)

6. 6 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva U.S. Federal Court Civil Action Resolution Federal Judicial Center, September 30, 2006 (MP)

7. 7 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Anticipating IP Dispute Resolution Needs International Neutral expertise Efficiency Confidentiality Preserving party relationships

8. 8 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva International (1) Intellectual property rights are often: –Created through international collaboration –Exploited through international commerce –Protected in a multitude of jurisdictions Intellectual property disputes often: –Involve parties from different jurisdictions –Concern commerce in a multitude of jurisdictions Court litigation: –Which court(s) is (are) competent? –Risk of inconsistent results Epilady case: European Patent Office patents infringement litigation in 9 countries; found “infringed” in 5 countries, “no infringement” in 4 countries –Time and cost of foreign litigation

9. 9 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva International (2) In arbitration, parties designate a single forum for resolving the entire dispute –Comprehensive and consistent resolution Rather than patchwork of court decisions –Neutrality No party is forced to litigate in the other’s home country International (procedural) standards International Enforceability: New York Convention –144 Member States –International arbitral awards to be recognized and enforced like final national court judgments –Only limited exceptions Mediation is not rooted in any jurisdiction or law

10. 10 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Neutral Expertise IP disputes tend to be technical/specialized –Law, technical background (patents, software, etc.) Most courts are not specialized in IP (IBA 2005 Survey) In ADR, parties control selection of neutral(s) –Can select neutral(s) with expertise in the relevant legal, technical or business area WIPO Center –1,500 candidates from 70 countries –Further candidates added in function of case particulars –Broad range of ADR, IP and technical backgrounds –Detailed professional profiles –Used for Center recommendations and appointments

11. 11 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Efficiency IP covers fast-evolving technology, used in highly competitive markets Often seen as the true cost of litigation: opportunity/management cost Need for efficient dispute resolution procedures –ADR offers party control (short deadlines) –WIPO expedited arbitration case example Comprehensive dispute resolution –One procedure, one law, one language, same lawyers, expert neutral(s), final result (award or settlement)

12. 12 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Confidentiality Often required in IP/technology disputes –Examples: patented technology, know-how, reputation –Except: where public precedent needed ADR is a private procedure WIPO Arbitration Rules –Except as agreed otherwise or required by law, all participants to preserve confidentiality regarding: Existence Disclosures Award –Specific protection of trade secrets WIPO Mediation Rules also prohibit disclosure in subsequent proceedings

13. 13 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Preserving Party Relationships IP often developed/exploited in long-term relationships between partners –Industry, SME’s, universities Arbitration –Private procedure, agreed by the parties –Flexible, can be tailored to the parties needs –Confidentiality helps parties to focus on the merits of the dispute, without concern about its public implications Mediation –Interest-based, rather than rights-based –Less acrimoneous –No real down side: 70% settlement rate; defines issues; shows risks of alternatives; can walk out; limited cost; has court support

14. 14 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Limitations of IP ADR (1) Contractual basis –No obligation to submit to ADR procedure without contract clause –Difficult to agree on clause once dispute has arisen –Unsuitable for bad-faith infringement (e.g. counterfeiting ) Parties must pay fees of neutrals –Crucial importance of getting value for money –ADR efficiency and results can make for substantial benefits

15. 15 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Limitations of IP ADR (2) Outcome binding only between the parties (inter partes) –No public precedent (erga omnes) –No general declaration of (in)validity –No direct office action (registration, cancellation ) But: inter partes effect proves mostly sufficient ICC interim award 6097 (1989) confirming arbitrability –Japanese claimant asserting breach of patent license by German licensee, who invoked invalidity of claimant’s patents –Party agreement : Place of arbitration: Zurich, Switzerland Contract interpretation: Japanese law Patent infringement: German law –Primacy of party intent in arbitration –Submission to arbitration is form of free disposal, like rights transfer or license (‘any dispute involving property’)

16. 16 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Center as Administering Authority –Contract clauses and rules for IP disputes WIPO (Expedited) Arbitration WIPO Mediation WIPO Expert Determination –WIPO list of arbitrators, mediators, experts Specialized in different areas of IP From numerous countries in all regions –Administration of cases Under WIPO Rules Under special procedures

17. 17 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO ADR Options

18. 18 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Arbitration Rules IP-specific elements –e.g. Confidentiality, technical evidence, interim relief But: WIPO Rules can apply to all commercial disputes –Commercial contract may have IP component –IP contract may cause ‘regular’ commercial dispute Combining guidance with flexibility –Arbitration Rules pre-structure the entire proceeding –For most part can be modified by arrangement between arbitrator(s) and parties For domestic and international cases –Bridging/accommodating different legal/procedural traditions

19. 19 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Expedited Arbitration Main features compared to regular arbitration: –Shorter procedural timelines –In principle, a sole arbitrator When consider WIPO Expedited Arbitration? –Value in dispute does not justify the cost of more extensive procedures –Only a limited number of contained issues in dispute Although difficult to predict at the contracting stage –Parties urgently need a final and enforceable decision –Parties wish to commence with an ambitious time/cost frame, subject to case developments

20. 20 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Cases: Legal Basis Domestic and international Prior clause and posterior submission Contractual and (occasionally) non-contractual Arbitration or mediation, or combined (in each ‘direction’) Sometimes following court litigation which the parties had commenced

21. 21 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva A Few General ADR Clause Pointers Use model clauses as basis and modify/extend only as necessary –Do not divide per type of right, remedy, dispute, or party case status Combine options, include mediation –Like court cases, many ADR cases get settled –Consider suitability of expert determination before arbitration If arbitration, ‘make it fit’ (e.g. expedited) ‘Institutional’ or ‘ad hoc’? –Hard to agree on procedure once dispute arisen –Do you know suitable neutrals –Which administering institution

22. 22 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Cases: Types of Procedure

23. 23 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Cases: Remedies, Value, Numbers, Locations Remedies: damages, infringement declarations, specific performance Value: from Euro 20,000 to US$ 600 million Numbers: some 200 (see WIPO web site) Locations: Europe, US, Asia (see WIPO web site)

24. 24 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Cases: Domestic / International

25. 25 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Cases: General Subject Matter

26. 26 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Cases: Business Areas

27. 27 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Cases: (Contractual) Subject Matter Contractual –Patent licenses –Distribution agreements –Research and development agreements –Joint ventures –Software/IT transactions –Disputes involving copyright collecting societies –Trademark coexistence agreements Non-contractual –Patent infringement

28. 28 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Case Results Mediation Arbitration

29. 29 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Mediation Case Example R&D company disclosed patented invention to manufacturer during consulting contract, without transfer or license of patent rights Manufacturer started selling products which R&D company alleged used its patent Negotiation of patent license failed; threat of multi- jurisdictional infringement proceedings Parties: –Submitted to WIPO Mediation –Worked with WIPO-appointed mediator –Agreed license and new consulting contracts

30. 30 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Arbitration Case Example 1 (I) Asian inventor granted exclusive license over a European patent and five US patents to US manufacturer Clause provided that disputes whether royalties had to be paid in respect of products manufactured by US party be resolved through WIPO Expedited Arbitration US party rejected claim that its products embodies technologies covered by the licensed patents and refused to pay royalties

31. 31 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Arbitration Case Example 1 (II) Inventor initiated WIPO case Center appointed sole arbitrator under WIPO Expedited Arbitration Rules Arbitrator had to consider whether products infringed the ‘claims’ asserted for each of the patents and whether patents had been ‘anticipated’ by ‘prior art’ –Highly complex legal and technical issues –Business secrets, models, site visits –Eight days hearing –Final award in 15 months

32. 32 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Arbitration Case Example 2 Finance agreement in connection with artistic production –German party - Swiss/Panamanian party –WIPO Expedited Arbitration clause –Each represented by US lawyers Urgent solution required: issue of contract interpretation under German law WIPO appointed Germany-based US arbitrator Short deadlines for written submissions One-day hearing Award rendered five weeks after commencement of arbitration

33. 33 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Arbitration Case Example 3 Major agreement for creation of web presence for popular national newspaper –WIPO Mediation followed by WIPO Expedited Arbitration Mediator appointed; no settlement, but mediation narrowed down and informed the issues Arbitrator appointed; parties settled after hearing Total timeframe: within eight months from commencement

34. 34 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva General Mediation Developments Growing acceptance –Corporate dispute policies –Corporate pledges –Client expectations –Institutional integration (e.g. UK Patent Office) Professionalization of the mediator profession Party focus on preparation for mediation

35. 35 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva General Arbitration Developments The impact of the globalization of commerce Convergence of procedural norms, e.g. –UNCITRAL (Model Law, Notes on Organizing Arbitral Proceedings, work on interim measures, revision of Rules) –IBA (Rules of Ethics, Guidelines on Conflicts of Interest, Rules on the Taking of Evidence) –Others (e.g. ABA, AAA, ICC) Multi-party arbitration Electronic discovery (US) How to contain process and cost Settlement in arbitration Increasing use of information technology, including online facilities (e.g. WIPO ECAF)

36. 36 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva Using IT to Facilitate ADR Purposes –Facilitate case communication (process) Time and cost Includes recording and submitting evidence –Enhance result (product) Standard tools –Email, Internet, ‘Video conferencing’ Hearings, meetings, witnesses, deliberations Custom-made applications e.g., WIPO ECAF

37. 37 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO Electronic Case Facility (‘ECAF’) http://www.wipo.int/amc/en/ecaf/index.html Web-based electronic case file –For WIPO cases (but also used under America’s Cup Rules) –Facilitates online communication and storage –Submission in most common formats (word, pdf, others) –Searchable by author, date, subject title –Email alerts Case management information –Names and contact details –Case overview

38. 38 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO ECAF: Case File

39. 39 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO ECAF: Case Management  Core case information at-a-glance

40. 40 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO ECAF: Envisaged Benefits Case Communication and Management –Easy –Instant –Centralized –Location-independent –Secure

41. 41 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva WIPO ECAF: Security Authentication –ECAF username –ECAF password –RSA SecurID password Changing passcode generated by RSA SecurID (Valid only for 60 seconds) Encryption –Modern SSL (Secure Socket Layer) system Firewall protection

42. 42 LESI Manila Workshop, June 10, 2009, WIPO IP ADR, Erik Wilbers, WIPO Center, Geneva More Information on the WIPO Arbitration and Mediation Center WIPO Center website: http://www.wipo.int/amc/en/ WIPO Center email: arbiter.mail@wipo.int