Ignacio de Castro

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Solving Disputes The Services of the WIPO
Arbitration and Mediation CenterWIPO-INSME
Training Program May 13, 2005

• Ignacio de Castro
• WIPO Arbitration and Mediation Center

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WIPO Arbitration and Mediation Center

• Established October 1994
• Purpose to promote the resolution of IP/IT
  disputes through arbitration and mediation
• Information and events
• On IP arbitration and mediation
• Mediation and (Expedited) Arbitration Rules
• Tailored to IP and technology disputes
• Not restricted to IP disputes
• Specialized ADR procedures (domain names)

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WIPO Center Experience Domain Names

• Leading domain name dispute provider (56)
• Parties from 120 countries,
• 11 languages
• Average duration 45-60 days

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ADR Options
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WIPO Center Experience Mediation and Arbitration

• Statistics
• 35 mediations
• 25 arbitrations
• Parties from 15 countries
• Procedures in English, French and German
• Subject Matter
• Contractual
• Patent licenses, trademark coexistence
  agreements, distribution agreements, RD, joint
  ventures, software/IT
• Submission once dispute has arisen
• Patent infringement

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Mediation and Arbitration Case Filing
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Mediation Elements

• Non-binding / party control
• Procedure Parties can cease to participate after
  first meeting with the mediator
• Outcome Not imposed but developed by the parties
• Based on interests of the parties
• Value creation
• Fast and efficient

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WIPO Mediation Example

• RD company disclosed patented invention to
  manufacturer during consulting contract.
• No transfer or license of patent rights
• Manufacturer started selling products which RD
  company alleged included patented invention
• Negotiation of patent license failed
• Multinational infringement proceedings?
• Parties submit to WIPO Mediation

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Commencement and Appointment of Mediator
COMMENCEMENT

• Request for mediation
• Mechanics - Arts. 3-5
• Administration fee - Art. 21
• Statute of limitations
• Appointment of mediator
• Parties or Center after consultation - Art 6
• List of candidates

APPOINTMENT OF MEDIATOR
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Mediation Sessions
COMMENCEMENT

• Alternatives to settlement
• Risk and cost of litigation
• Interests of the parties
• Use of patented technology vs. further business
• Settlement options
• Mutual interest in cooperation

APPOINTMENT OF MEDIATOR
INITIAL CONFERENCE
MEETINGS
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Conclusion of the Mediation

• Settlement agreement
• License and agreement on further business
  relationship
• Enforceable under contract law
• But usually voluntary compliance
• Termination
• Withdrawal by one or both parties after the first
  meeting
• Decision of the mediator

COMMENCEMENT
APPOINTMENT OF MEDIATOR
INITIAL CONFERENCE
MEETINGS
CONCLUSION
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• Party autonomy
• Flexibility
• Efficiency
• Rules on technical evidence
• Confidentiality provisions

• One exchange of pleadings
• Shorter time limits
• Sole arbitrator
• Shorter hearings
• Fixed arbitrators fees

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Arbitration Proceedings
Testing the water Interim measures Registration
and administration fees
Request for Arbitration
Answer to Request for Arbitration (30 days)
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Arbitration Proceedings
Schedule of Fees
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Arbitration Proceedings
Party control WIPO List Impartiality and
independence Default Jurisdiction of the tribunal
Request for Arbitration
Answer to Request for Arbitration (30 days)
Appointment of Arbitrator(s)
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WIPO List of Neutrals

• 1,000 experts
• 100 nationalities
• Broad range of ADR, IP, and technical backgrounds
• Arbitrators fees
• Role of the WIPO Center

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Arbitration Proceedings
Request for Arbitration
Further written statements Preparatory conference
Answer to Request for Arbitration (30 days)
Appointment of Arbitrator(s)
Statement of Claim (30 days)
Statement ofDefense (30 days)
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Arbitration Proceedings

• Presentation of evidence
• tribunals control
• admissibility, disclosure
• Witnesses
• Experiments
• Primers and models
• Experts

Request for Arbitration
Answer to Request for Arbitration (30 days)
Appointment of Arbitrator(s)
Statement of Claim ( 30 days)
Statement of Defense
Further Written Statements and Witness Statements
Hearings
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Arbitration Proceedings
Request for Arbitration
Answer to Request for Arbitration (30 days)
Appointment of Arbitrator(s)

• Award
• No appeal
• Enforcement

Statement of Claim (30 days)
Statement of Defense
Further Written Statements and Witness Statements
Hearings
Closure of Proceedings
Final Award (3 months)
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Expedited Arbitration

• When is it appropriate?
• Statement of Claim filed with Request for
  Arbitration and Statement of Defense with Answer
  to the Request
• Sole arbitrator
• Fixed arbitrators fees for disputes up to USD
  10 million
• Shorter hearings
• Time limits shortened

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WIPO Expedited Arbitration Case Examples

• Dispute inventor and manufacturer
• 6 US and 1 European Patents
• Exclusive license, but no use
• Are other products infringing?
• Sole Arbitrator, eight days hearing
• Business secrets, models, site visits
• Final Award 15 months
• Finance contract - urgent resolution needed
• Shorter deadlines for party filings
• One day hearing
• Final Award 6 weeks

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WIPO Procedures

• Tested Rules
• Efficient and cost-effective administration
• active case management
• List of specialized Neutrals
• 1000 candidates from 70 countries
• Broad range of ADR, IP and technical backgrounds
• Worldwide contacts
• Institutional certainty

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Information

• Mediation workshops, June 2005
• Arbitration workshop, October 2005
• http//arbiter.wipo.int
• arbiter.mail_at_wipo.int
• Mailing lists
• http//arbiter.wipo.int/subscribe/index.html