Alternative Dispute Resolution @WIPO's Arbitration and .ppt

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1、Alternative Dispute Resolution WIPOs Arbitration and Mediation Center,Seminar on WIPO Services and Initiatives Victor Vazquez Lopez, Section for Coordination of Developed Countries, Department for Transition and Developed Countries (TDC) WIPO NIPOOslo, Norway, October 16, 2013,2,Common Types of IP D

2、isputes,Contractual: patent licenses, software and other information technology (IT), research and development agreements, trademark coexistence agreements, patent pools, distribution agreements, joint ventures, copyright collecting societies, IP settlement agreementsInfringement of IP rightsDomesti

3、c as well as international disputes,3,Patent Litigation in Courts,This chart is based on figures provided in Patent Litigation - Jurisdictional Comparisons, Thierry Calame, Massimo Sterpi (ed.), The European Lawyer Ltd, London 2006. * Report of the Economic Survey, Prepared Under the Direction of La

4、w Practice Management Committee, AIPLA, Arlington 2011.,4,WIPO Arbitration and Mediation Center,Facilitates the resolution of commercial disputes between private parties involving IP and IT, through procedures other than court litigationADR of IP disputes benefits from a specialized ADR providerWIPO

5、 panel members experienced in IP and technology - able to deliver informed results efficiently Competitive WIPO fee structure (including reduced fees for PCT applicants) International neutrality Offices in Geneva and Singapore,5,Mediation, Arbitration, Expert Determination,Mediation: an informal con

6、sensual procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of their dispute, based on the parties respective interests. The mediator cannot impose a decision. The settlement agreement has the force of a contract. Mediation leaves open all other disp

7、ute resolution options.Arbitration: a consensual procedure in which the parties submit their dispute to one or more chosen arbitrators, for a binding and final decision (award) based on the parties respective rights and obligations and enforceable as an award under arbitral law. Arbitration constitu

8、tes a private alternative to court litigation.Expert Determination: a consensual procedure in which the parties submit a specific matter (e.g. technical question) to one or more experts who make a determination on the matter, which can be binding unless the parties have agreed otherwise.,6,Why ADR f

9、or IP Disputes?,Internationalization of creation/use of IP: cross-border solutionsTechnical and specialized nature of IP: specific expertise of the neutralShort product and market cycles: time-efficient proceduresConfidential nature of IP: confidential proceduresCollaborative nature of IP creation a

10、nd commercialization: procedures that preserve relations,7,WIPO ADR Options,WIPO Contract Clause/ Submission Agreement,Expert Determination,Determination,(Negotiation),Mediation,Award,Party Agreement,Outcome,Procedure,First Step,8,WIPO Model Clause Example: Mediation followed by Expedited Arbitratio

11、n,“Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall

12、 be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be specify place. The language to be used in the mediation shall be specify language”,If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation

13、 within 6090 days of the commencement of the mediation, it shall, upon the filing of a Request for Arbitration by either party, be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules. Alternatively, if, before the expiration of the said period of

14、 6090 days, either party fails to participate or to continue to participate in the mediation, the dispute, controversy or claim shall, upon the filing of a Request for Arbitration by the other party, be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitrati

15、on Rules. The place of arbitration shall be specify place. The language to be used in the arbitral proceedings shall be specify language. The dispute, controversy or claim referred to arbitration shall be decided in accordance with specify jurisdiction law.“,http:/www.wipo.int/amc/en/clauses/index.h

16、tml,9,9,One exchange of pleadingsShorter time limitsSole arbitratorShorter hearings Fixed fees,10,Active WIPO Case Management,General procedural information, training programs Initiation of procedure and subsequent case communication (option of WIPO Electronic Case Facility) Neutral appointment proc

17、ess Over 1,500 specialized neutrals 100 nationalities Mediators, arbitrators, technical experts All areas of IP/IT New neutrals added in function of specific case needs Setting fees, financial management Availability of procedural guidance to neutral At request, hearing/meeting logistical assistance

18、,11,WIPO Electronic Case Facility (ECAF),Easy; instant; centralized; location-independent; secure; available at parties option,12,WIPO Cases,Subject Matter,Business Areas,WIPO AMC has administered over 350 cases, with parties from Austria, China, Cyprus, Denmark, Finland, France, Germany, India, Ire

19、land, Israel, Italy, Japan, Netherlands, Norway, Panama, Romania, Russian Federation, Singapore, Spain, Switzerland, Turkey, United Kingdom and United States of America,13,WIPO Mediation Example 1 (I),US company/Swiss company Patent infringement dispute related to US patents owned by US company in a

20、utomotive sector Settlement agreement 2007 Dispute resolution clause: WIPO Mediation followed if necessary by WIPO Arbitration Request for mediation in 2009 WIPO proposed a shortlist of candidates Parties chose from such list a patent practitioner, fluent in English, with knowledge of US patent law

21、and experience in patent infringement mediation,14,WIPO Mediation Example 1 (II),Two-day session in Geneva at WIPO Mediator explained ground rules of the session (e.g. confidentiality, caucus) and his role Early agreement on framework for royalty paymentsFinal Settlement:Term sheet: down payment, an

22、nual installments, net sales-based royalty Re-drafted original licensing agreement, final agreement by September 2009End of two-year dispute within 5 months, parties avoided (US) arbitration, option of further collaboration,15,WIPO Mediation Example 2 (I),Patent infringement disputeR&D company holdi

23、ng patents disclosed patented invention to manufacturer during consultancy 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?

24、Parties submitted to WIPO Mediation,16,WIPO Mediation Example 2 (II),WIPO appointed an experienced mediator with expertise in the subject matter of the dispute Parties and mediator met during one week Settlement agreement reached, including grant of license for royalties, and a new consultancy agree

25、ment Process duration: 4 months Mediator fees: USD 24,000,17,WIPO Mediation Example 3,2006 European airline agreement with a US software company re. development of worldwide platform for the management of ticket sales 2007 professional services agreement: detailed description of the project as well

26、as the support services to be delivered by the software company WIPO mediation followed by WIPO expedited arbitration clause Airline paid several million USD for the application 2009 airline terminated the agreement Software company requested that the software be returned Airline initiated mediation

27、 Result: new license,18,WIPO Arbitration 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 Expedi

28、ted ArbitrationUS party rejected claim that its products embodies technologies covered by the licensed patents and refused to pay royalties,19,WIPO Arbitration Example 1 (II),Inventor initiated WIPO caseCenter appointed sole arbitrator under WIPO Expedited Arbitration RulesArbitrator had to consider

29、 whether products infringed the claims asserted for each of the patents and whether patents had been anticipated by prior artHighly complex legal and technical issues Business secrets, models, site visits Eight days hearing Final award,20,Examples of Tailored WIPO ADR for Specific Sectors,Domain Nam

30、es (40,000+ cases since 1999) Intellectual Property Offices (e.g., ADR options for parties in administrative procedures before the IPO of Singapore and INPI Brazil) Research and Development/Technology Transfer Patents in Standards http:/www.wipo.int/amc/en/center/specific-sectors/,21,WIPO Internatio

31、nal Survey on Dispute Resolution in Technology Transactions,Place of Survey Respondent Business Operations,Type of Survey Respondent,22,Scope of Agreements: Parties/Technology,91% of respondents conclude agreements with parties from other jurisdictions.+80% of respondents conclude agreements relatin

32、g to technology patented in multiple jurisdictions.,23,Top Ten Considerations in Choice of Dispute Resolution Clause,24,How Are Technology Disputes Resolved?,25,Relative Time and Cost of Technology Dispute Resolution,26,Settlement in WIPO-Administered Cases,27,More Information,wipo.int/amc arbiter.mailwipo.intWIPO Center Office in Geneva WIPO Headquarters +41 22 338 8247 WIPO Center Office in Singapore Maxwell Chambers +65 6225 2129,