This article provides an insight on the WIPO’s approach to resolve IP disputes. It shed lights on the WIPO ADR Proceedings.
Established in 1967, the World Intellectual Property Organization (WIPO); is a mechanism of the United Nations which strives to facilitate the preservation of IPR through alliances among States. The WIPO Arbitration and Mediation Center (WIPO Center); was founded in 1994 as an impartial, autonomous, and non-profit dispute resolution authority.
It is the sole global provider of tailored ADR assistance for IPR disputes. It is the foremost organization in the management of Internet domain name conflicts. The WIPO Arbitration and Mediation Center extends time-efficient and cost-efficient Alternative Dispute Resolution (ADR) alternatives. It includes mediation, arbitration, sped arbitration, and expert determination to encourage private individuals to resolve their domestic or commercial conflicts.
It operates worldwide and focuses on IP and technology differences. The WIPO Center is an international authority in the provision of domain name dispute resolution assistance under the WIPO-designed UDRP.
The legal structure for WIPO ADR is given in the WIPO Mediation, Arbitration, Expedited Arbitration, and Expert Determination Rules, respectively. These Rules are acceptable for all retail disputes and additional requirements to address particular needs in IP disputes; such as those on confidentiality and evidence.
To assist parties in appointing impartial adjudicators, the WIPO Center retains a database of over 2,000 mediators, arbitrators, and specialists; with expertise in IP, data, and Communication Technology, and commercial disputes. For all the widespread benefits experienced by various ADR procedures, there are markedly various traits to each of them.
Specifically, the degree of supervision that the parties possess over the decision-making procedure; and the ultimate result will differ considerably across methods.
While the various procedures can be incorporated in escalation clauses, normally, ADR processes have three primary categories
Parties possess maximum supervision over the decision-making procedure and the ultimate result in an assistance-based ADR method, like mediation. In mediation, the mediator’s objective is to encourage the parties in getting an outcome to their dispute. The parties have comprehensive control over the outcome and a substantial choice in the mediation method.
Relative to mediation, the recommendation-based ADR method provides parties less restraint over the decision-making method and the ultimate result. Non-binding Expert Determination is an example of a recommendation-based method.
In expert determination, parties introduce a particular issue to an expert; who gives rise to a determination on the matters introduced. The parties can decide to adopt the neutral’s determination as a non-binding recommendation or as a last and binding determination.
In adjudication-based ADR methods like arbitration, parties have fixed control over the decision-making and the outcome. As a point for comparison, parties in litigation have very little choice in the decision-making cycle and the final result. Both of it are defined by the court.
In arbitration, even though parties may have some assertion in the decision-making cycle; like in connection to the extent of the dispute proposed to arbitration or procedural questions; they must approve the ultimate decision rendered by the arbitral tribunal.
Parties initiate disputes to WIPO Mediation via a contractual clause, a submission agreement, or a unilateral petition for WIPO Mediation. Mediation Contract Clause enacting WIPO Rules is the most often desired WIPO mediation.
Through a Mediation Submission Agreement, parties agree to WIPO Mediation only after a dispute has occurred. Lastly, through a Unilateral Request for WIPO Mediation by one party; they submit a dispute by reaching the other party and the WIPO Center.
Furthermore, in subsisting proceedings, parties can relegate their dispute to Mediation, either as approved by the court or by consensus. For these routes, WIPO has accessible model clauses and submission agreements. Parties can forge the mediation method through the clause, for instance by specifying the location and language.
Where a contract does not comprise a mediation clause or no contract exists between parties; they may call for mediation through a unilateral request.
Article 4 of the Mediation Rules illustrates that in the shortage of a Mediation Agreement; a party can initiate a written petition to the WIPO Center and the additional party.
Here, the WIPO Center helps the other party to evaluate the request and comprehend the mediation method. The unilateral request is particularly useful in infringement differences or cases pending before the courts.
There are some customs related to mediation and its structure is determined by the parties and the mediator. They reckon and concede to the procedure they wish to follow; summarizing the primary steps in the Mediation and modifying them when necessary.
These steps include:
The starting point is the consensus of the parties to introduce a dispute for mediation. It could be either through a contract regulating a business alliance between the parties; or it may be specifically composed in connection to a specific dispute after the dispute has arisen. Where no such agreement exists, one party can file a unilateral request and to the other party; and if the other party approves the mediation proceeds.
The request for mediation must present summary facts about the dispute; with the names and communication details of the parties, a copy of the agreement; and a short explanation of the dispute. These details are not legally binding, they just provide adequate data for the mediation to continue.
In the process of selecting the mediator, the WIPO Center reaches the parties or their representatives to begin the dialogues on the appointment; and unless they have previously agreed on such individual, the Center helps them through the list procedure.
Herein, based on the subject matter, region and nationality, and language of the part; the Center provides a shortlist of probable candidates to each party, with comprehensive profiles and their qualifications.
If the parties do not agree on a mediator, each party classifies the candidates as per their preference. Once the impartiality of the selected mediator is confirmed; the Center finalizes the appointment taking into account the preferences expressed by the parties.
After the appointment, the mediator executes preliminary dialogue with the parties. The mediator is allowed to communicate with both parties to introduce themselves and the role of the parties; guarantee that the parties have a mutual understanding of the process, set a schedule, agree on documentation and the timetable for the same and discuss a meeting date, venue, and representation.
The WIPO Rules offer a comprehensive procedural framework for mediation and are integrated by reference in the parties’ agreement. As such, the WIPO Rules set the ground for the alliance between the mediator and the parties.
By consenting to mediate under the WIPO Rules, the parties and the mediator are liable under the provisions of confidentiality, good faith, fee arrangements, encompassing the mediator’s duty to retain a record of the work accomplished and the time spent, and the parties’ obligation to pay the mediator’s fees, and liability.
Many mediators do expect the parties to authorize a protocol on the alliance between the mediator; the parties, and some additional components of the proceedings. In extension to the applicability of the WIPO Rules, this implies few jurisdictions’ mediation processes or federal law.
Conventionally arbitration is the best-recognized alternative to court litigation; however, it can exclusively take place if both parties have conceded to it.
This is accomplished by the inclusion in the agreement of an arbitration clause or through a submission agreement. Under the WIPO Rules, the parties can either, appoint the arbitrators or the WIPO Center recommend certainly probable arbitrators.
Parties also choose important components such as the relevant law, language, and place of arbitration. This enables them to guarantee that no party possesses a home-court advantage.
The Rules precisely safeguard the confidentiality of the arbitration, of any revelations made during that process, and of the award. Further, it permits a party to appeal the arbitral tribunal; to impede the access to trade secrets or other confidential data that it provides to the tribunal.
As per the Rules, the parties agree to accomplish the decision of the tribunal and if assigned; transnational awards are enforceable by federal courts under the “New York Convention”.
While arbitration normally provides efficiency advantages; the WIPO Expedited Arbitration Rules particularly authorize the procedure to be administered in a shorter timeframe and at a decreased cost.
Notably, there is only one exchange of pleadings and there exists a sole arbitrator; preventing the lengthy decision-making process of tribunals, and the related expenses. Proceedings are closed within 3mos of either the release of the Statement of Defense or the institution of the tribunal, whichever occurs subsequently.
Expedited arbitration is less capable for intricate patent conflicts that oftentimes require substantial production of evidence, expert examination, or lengthier hearings.
WIPO eADR enables parties, their representative, the arbitrator, and any witnesses; or experts in a case, to safely deliver transmissions electronically to an online case file. Users obtain email alerts for these submissions and may access and survey the casefile online easily. All case data filed in WIPO eADR is preserved to guarantee confidentiality.
Within the WIPO Rules, the procedure, rights, and responsibilities in a WIPO arbitration case are specified by the tribunal jointly with the parties; favored by the WIPO Center. The following points identify the Arbitration Rules; whereby most of this recommendation also encompass cases under the WIPO Expedited Arbitration Rules.
WIPO arbitration is begun by the claimant submitting a Request for Arbitration; and its date of commencement is the date on which the request is accepted by the WIPO Center.
The Request includes brief details about the dispute, the names and communication details of the parties, a copy of the agreement, an explanation of the dispute, the remedy sought, and any petitions or statements about the nomination of the tribunal.
An extensive statement of facts and legal statements, comprising a full statement of the remedy sought; may be relinquished to the Statement of Claim to be documented after the authorization of the tribunal.
Within 30 days of receipt of the request; the respondent must document an Answer, containing comments on elements of the Request for Arbitration and may include indications of a counter-claim or set-off.
The appointment of the tribunal is an important step in any arbitration proceedings. Under the WIPO Rules, parties possess extensive autonomy in the appointment procedure and can concede on such issues as the appointment method, the number of arbitrators, any mandatory qualification for the arbitrators, including their nationality, and the individual to be elected as arbitrators.
Where the parties cannot agree by the deadline, the WIPO Center will bring about the important determination. The WIPO Center gives tremendous value to the competent integrity of its arbitrators. As per the WIPO Arbitration Rules, every arbitrator, including any appointed arbitrator, is compelled to be equitable and autonomous.
The Arbitration Rules in Article 37, provides extensive powers to the tribunal to “execute the arbitration in a manner it deems appropriate.” Article 37(b) and (c) of the WIPO Arbitration Rules advise its authority.
The tribunal must honor the due process and guarantee that every party is provided a fair opportunity to demonstrate their case, leading to an enforceable award. Simultaneously, the tribunal shall guarantee that the arbitral process ensues with due expedition.
The Statement of Claim is filed within 30 days of the institution of the tribunal and the Statement of Defense is filed within 30 days of receipt of the Claim. The tribunal may schedule further submissions.
Shortly after it has been ascertained, the tribunal carries out preliminary dialogue on, inter alia, case schedule, hearing dates, information and confidentiality stipulations. In most issues, a hearing is carried out for the production of evidence.
If the parties and tribunal concede, the hearing may similarly be carried out through online means of communication. If no hearing is carried out, the proceedings are executed based on the documents and other evidence.
The tribunal has broad powers to determine the admissibility, relevance, materiality, and weight of evidence before it (Article 50).
To facilitate the taking of technical evidence, the WIPO Arbitration Rules encompass particular requirements on distinct types of evidence, such as examinations (Article 51), site calls (Article 52), or concurred primers and models (Article 53).
Not rarely, WIPO arbitrations and accelerated arbitrations implicate abundant claimants or respondents. Numerous regulations of the WIPO Rules deal with such strategies, including the procedure of assigning three arbitrators where decided in case of different claimants or respondents (Article 18), the joinder of more parties (Article 46), and the merger of arbitration proceedings (Article 47).
Any decree of joinder or merger imposes prior agreement by all parties and recognizes the stage achieved in the arbitration proceedings. The accessibility of provisional relief can be crucial in IP and technology conflicts. As per the WIPO Rules, the tribunal can publish any interim orders or take other temporary steps it considers essential at the invitation of a party. For instance, the Rules observe orders and measures for the preservation of goods.
The tribunal may instruct the petitioning party to provide reasonable security as a condition for awarding the provisional relief. In few circumstances, interim relief from an arbitral tribunal may not be accessible or adequate. This would be the issue where the necessity for provisional relief occurs before the tribunal has been elected; or where such solace implicates third parties not accountable to the tribunal’s authority.
The WIPO Rules elucidate that a party has the freedom to call for provisional relief from a federal court at any time and that such petitions shall not be considered different from the arbitration agreement.
When the tribunal deems that the parties have a had reasonable chance to demonstrate their proposals and evidence; it will affirm the proceedings closed. This should occur within 9mos of either the release of the Statement of Defense or the institution of the tribunal. The ultimate award should be provided by the tribunal within 3mos of the end of the proceedings.
Parties who have settled in the course of an arbitration, including through mediation; may wish to have the terms of their settlement confirmed in the form of a “consent award”. In furtherance it will be a straightforward to enforce than an agreement between the parties. The Arbitration Rules under Article 67 expressly comprehends and facilitates this alternative.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
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