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Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, 2008 1 Arbitration, Mediation.

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Presentation on theme: "Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, 2008 1 Arbitration, Mediation."— Presentation transcript:

1 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Arbitration, Mediation and Expert Determination Time- & Cost-Efficient Dispute Resolution Tools Eun-Joo MIN Arbitration and Mediation Center World Intellectual Property Organization

2 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Arbitration and Mediation Center Time & cost efficient resolution of IP and technology disputes, between private parties, away from court Established in 1994 as part of WIPO Procedures Mediation (Expedited) Arbitration Expert Determination Combined procedures Specialized Procedure: Domain Name Dispute Resolution

3 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Trends in IP Disputes (1) Internationalization of creation and use of IP rights & globalization of markets; need for cross-border solutions for disputes Accommodate different languages, cultures, (geographically limited) laws Avoid litigation in several jurisdiction (cost; risk of contradictory results – Angiotech patent 2007) Avoid home-court advantage Need for cross-border injunctions Growth of complex long-term relationships; strategic alliances; need to co-exist Licensing, cross-licensing, patent pooling, standards Need for mechanisms that preserve relations

4 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Trends in IP Disputes (2) Increasingly technical and specialized nature of IP Need for specific expertise of neutral Closely guarded relationships: confidentiality Highly competitive areas; Short product and market cycles Need for time-efficient procedures Dispute resolution as business decision Routine IP litigation on a multi-country front complex, uncertain, protracted, expensive

5 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Preferred Processes for Resolving Cross-Border Disputes (Source: (2006) Arbitration in combination with other ADR processes 44% Arbitration only 29% Mediation and Other ADR processes 16% Litigation only 11%

6 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Mediation, Arbitration, Expert Determination Mediation A non-binding procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of a dispute. Arbitration A procedure in which the dispute is submitted to one or more arbitrators who make a binding decision on the dispute. Expert determination A procedure in which a dispute/difference (frequently discrete issues of technical, scientific or related business nature) is submitted to one or more experts who make a determination on the matter referred. A WIPO determination is binding, unless the parties agreed otherwise.

7 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Mediation Non-binding procedure controlled by the parties Confidential procedure Interest-based procedure (party-to-party communication) High success rate; low risk

8 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Mediation Process Commencement Appointment of Mediator Initial Conference Meetings Conclusion Request for Mediation (Art 3-5); Fees Art 21) Role of the mediator (Art 13); Appointment (Art 6-7) Conduct of the mediation (Art 9-12) Set up the first meeting; Agree on preliminary exchange of document, if any Agree on ground rules of the process; Gather information and identify issues; Explore the interests of the parties; Develop options for settlement; Evaluate options 80% success; costs USD 6,000-60,000; duration 1-7months

9 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Mediation Example Patent infringement dispute R&D company holding patents disclosed patented invention to manufacturer during consulting contract No transfer or license of patent rights Manufacturer started selling products which R&D company alleged included patented invention Negotiation patent license failed Parallel infringement proceedings in several jurisdictions? Parties submitted to WIPO Mediation Outcome: agreed license and new consulting contracts Total duration: 4 months Mediators fees: USD 24,000

10 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Arbitration Consensual & flexible procedure: choice of arbitrator(s) Party autonomy Neutral Confidential Efficient Interim Measures (WIPO Rules, Art. 46) Experts (WIPO Rules, Art. 48, Art. 55) Remedies (damages, performance, injunctions, declaratory relief, costs, etc.) Final Award Award enforceable New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards (142 States have ratified)

11 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Arbitration

12 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Arbitration Example 1 License agreement between European software developer and Japanese media company Platform for sale and licensing of mobile payment service in Japan WIPO Arbitration: one arbitrator, place of arbitration Geneva Request for Arbitration filed by Japanese party: Alleged breach of license: failure to provide technical service and support Claim for damages: +USD 2 million Interim measures: bank guarantee Conciliation conference suggested by arbitrator Settled

13 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Arbitration Example 2 US university registers TM for system in US, Canada, etc. CN IT manufacturer registers TM for computer products in 16 countries Opposition proceedings & litigation for 6 years TM coexistence agreement; WIPO arbitration clause US universitys TM application in CN refused, requests CN manufacturers collaboration Request for specific performance (proxy registration & license); sole arbitrator Interim award (specific performance)

14 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Arbitration WIPO Expedited Arbitration One exchange of pleadings ; Shorter time limits; Sole arbitrator; Shorter hearings; Fixed arbitrators fees

15 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Expedited Arbitration Examples Financing Agreement Both parties see urgency and agree on short deadlines Only one issue in dispute One-day hearing Final Award: 5 weeks Arbitrators fees: USD 20,000 Exclusive Patent License Dispute involving 1 European and 5 US patents US party rejected Asian party (inventor)s claim that its products embodies technologies covered by licensed patents and refused to pay royalties Complex legal and technical issues (infringement, validity, enforceability, contract defense) Business secrets, models, site visits (protective orders) 12 procedural orders, 2 preliminary awards eight-day hearing Final Award: 15 months

16 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Expert Determination Accommodate expeditious resolution of disputes between parties, concerning an issue of limited scope (e.g. royalty rate dispute) or clarification of certain technical or scientific issues by a neutral third party More informal, flexible and expeditious than arbitration Determination binding (unless parties agree otherwise) May be combined with other WIPO procedures

17 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Mediation, Arbitration and Expert Determination (1) Party control / autonomy / consensual Flexibility : à la carte Expertise Party selection of neutrals; tailored appointment Neutral Arbitrator/mediator/expert, language, law, venue Confidential Existence, disclosures, result (WIPO Arb Rules Arts. 52, 73-76) Less adversarial than court litigation Restore a working business relationship

18 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Mediation, Arbitration and Expert Determination (2) Single Procedure Multi-jurisdictional disputes in one proceeding No jurisdictional problems Time & cost effective (WIPO Arb Rules, Art 38) Arbitration: finality / enforceability of awards New York Convention vwith limited exceptions (e.g. denial of due process), automatic enforcement of arbitral awards v142 signatories Inter-partes effect Mediation: commercial solutions

19 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Routes to ADR Court Annexed (in particular mediation) e.g. US District Court for the District of Delaware Voluntary decision of the parties Submission Agreement ADR Clause

20 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Drafting ADR Clauses Essential elements: Type of ADR Applicable rules Location, language of ADR Number of neutrals Governing law, if arbitration Place of arbitration: arbitration-friendly environment; modern arbitration act Use model clauses and modify only as necessary Combine options, including mediation High settlement rate Make it fit (e.g. expedited arbitration)

21 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Recommended WIPO Mediation Clause Any dispute (…) shall be submitted to mediation in accordance with WIPO Mediation Rules. The place of mediation shall be […]. The language to be used in the mediation shall be […]. Recommended WIPO Arbitration Clause Any dispute, (…) shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators][a sole arbitrator]. The place of arbitration shall be […]. The language to be used in the arbitral proceedings shall be […]. The dispute, controversy or claim shall be decided in accordance with the law of […]. (http://www.wipo.int/amc/en/arbitration/contract-clauses/clauses.html) Recommended WIPO Expert Determination Clause Any dispute (…) shall be referred to expert determination in accordance with the WIPO Expert Determination Rules. The determination made by the expert shall [not] be binding upon the parties. The language to be used in the expert determination shall be […].

22 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Center: ADR Options

23 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Combined Procedures Combining the Benefits Mediation followed by Arbitration Mediation followed by Expert Determination Expert determination followed by Arbitration

24 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Arbitration and Mediation Case Experience (1) 70+ mediations 100+ arbitrations Parties from 18 countries (domestic & international) Austria, Canada, China, Denmark, Finland, France, Germany, Ireland, Israel, Italy, Japan, the Netherlands, Panama, Romania, Spain, Switzerland, UK, USA, etc. Place of Arbitration France, Germany, the Netherlands, Switzerland, USA Procedures English, French, German, Italian

25 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Arbitration and Mediation Case Experience (2) Subject matter: Contractual: patent licenses (inc. standard-related), pharmaceutical distribution agreements, R&D, joint ventures, software/IT, copyright collecting societies, trademark coexistence agreements, art marketing, other commercial relationships (construction, finance, employment). Patent infringement High success rate Value in dispute: USD 20,000 – USD 600 million

26 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22,

27 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Role of the WIPO Center as an Administering Authority (1) Administered vs. Ad Hoc? Hard to agree on procedure once dispute arisen; do you know suitable neutrals; which administering institution (do not combine) List of neutrals (arbitrators, mediators, experts) Over 1,000 mediators, arbitrators, experts 70 nationalities Broad range of ADR, IP, and technical backgrounds Rules with IPR orientation Mediation, (Expedited) Arbitration, Expert Determination e.g. WIPO Arb Rules Arts 48-52: special rules on experiments, site visits, agreed primers and models, trade secrets and confidential information, protective orders, confidentiality advisor Model contract clauses

28 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Role of the WIPO Center as an Administering Authority (2) Competitive fees Efficient and cost-effective case administration Establishment of the Tribunal, challenges, support in appointment of experts, management of fees and costs Hearing facilities Free of charge in Geneva and Singapore WIPO Electronic Case Facility (ECAF) International, institutional knowledge, guidance, supervision Design and operation of procedures for special categories of IP disputes (UDRP)

29 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Schedule of Fees

30 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Electronic Case Facility (ECAF) Available for arb / med cases under WIPO Rules Certain exceptions: Americas Cup Jury Procedure Main features Web-based electronic docket Facilitation of party / neutral case management Easy, instant, location-independent, secure User Information

31 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Role of the WIPO Center as a Resource Center IP ADR guidance Publications Workshops, conferences (upcoming events) WIPO Workshop for Mediators in Intellectual Property Disputes, May 26-27, 2008 WIPO Advanced Workshop for Mediators in Intellectual Property Disputes, May 29-30, 2008 WIPO Arbitration Workshop, October 21-22, 2008 WIPO Advanced Workshop on Domain Name Dispute Resolution, October , 2008

32 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Center Domain Name Case Experience (1) Over 28,000 domain name cases Mostly under WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP) Over 50 national domains (ccTLDs) Examples columbiapictures.com, dreamworks-china.com, emiwarnermusic.com, espn.com.au, ifpi.com, elpais.com,.com, jkrowling.ir, mariovargasllosa.org, microsoft.org

33 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, WIPO Center Domain Name Case Experience (2) UDRP.info Sunrise.biz STOP.name ERDRP.mobi Sunrise.mobi Premium Names Total ' '557 1' ' '207 13' ' ' ' ' ' ' ' ' ' '157 Jan-Feb Total 12'689 15' '329

34 Seminar on Intellectual Property and Creative Small and Medium-Sized Enterprises in the Digital Environment May 20 to 22, Information Website: s: Mailing list:


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