Alternative Dispute Resolution for IP Disputes: the WIPO Arbitration and Mediation Center’s Experience

Submitted by Justine Ferland, Legal Case Manager, IP Disputes Section, WIPO Arbitration and Mediation Center; member of the Quebec Bar. 

ADR for IP Disputes

Disputes interfere with the successful use and commercialization of IP rights, especially when they span multiple jurisdictions and involve highly technical matters, complex laws and sensitive information. Identifying the most appropriate solution for resolving such disputes as fairly and efficiently as possible, in many cases while preserving confidentiality and without disrupting underlying business relationships, is often a challenge for IP practitioners.

Using alternative dispute resolution (ADR) mechanisms for the resolution of IP disputes, rather than recourse to litigation before national courts, has distinct advantages. ADR allows parties to resolve their dispute in a time- and cost-efficient way through a single neutral procedure which can be customized to their needs, compared to potential parallel litigation in several jurisdictions. ADR also offers, to a large extent, the advantage of keeping the proceedings and outcomes confidential and, especially in the case of mediation, gives the parties the opportunity to go beyond the legalistic resolution of the dispute to negotiate creative solutions that satisfy their business interests.

The WIPO Arbitration and Mediation Center (WIPO Center) has considerable experience in administering such ADR mechanisms and can be an interesting option for Canadian IP practitioners dealing with national or international IP and technology disputes.

The WIPO Arbitration and Mediation Center

The WIPO Center was established in 1994 and is part of the World Intellectual Property Organization. With offices in Geneva and Singapore, the WIPO Center’s role is to facilitate the time and cost-effective resolution of national and international IP, technology and commercial disputes through ADR mechanisms. 

Developed by leading experts in cross-border dispute settlement, the procedures offered by the WIPO Center are recognized as particularly appropriate for IP and technology disputes as they contain specific provisions concerning confidentiality, disclosure of trade secrets, agreed primers and models, technical evidence and site visits. Their scope is however not limited to such disputes; they can be, and have been, successfully used in purely commercial disputes as well.

The WIPO Center is also the leading global provider of mechanisms for resolving internet domain name disputes without the need for court litigation. This service includes the Uniform Domain Name Dispute Resolution Policy, under which the WIPO Center has so far processed over 55,000 cases related to the abusive registration and use of Internet domain names.

The WIPO Center’s Caseload

The WIPO Center has administered more than 900 mediation, arbitration, expedited arbitration and expert determination cases, most of which in the last five years. These cases have involved contractual and non-contractual disputes on a wide range of IP and related matters such as patent infringements and licenses, copyright, trademark licenses and co-existence agreements, information technology, joint ventures, software licenses, art marketing, R&D agreements, technology transfers, telecommunications and TV distribution rights. In addition to IP-related cases, the WIPO Center also administers commercial cases that do not necessarily imply IP considerations such as distribution, franchising, marketing, construction, energy and insurance disputes.

The WIPO Center’s ADR services have been used by multinational corporations, small and medium-sized enterprises, R&D centers, universities and inventors worldwide. Even though most of the disputes administered by the WIPO Center are international, approximately one-third of such disputes are of domestic nature.

An increasing number of cases are filed every year with the WIPO Center. In 2021, the WIPO Center saw a 45% increase in its annual caseload. The main business areas in the cases were digital copyright, information and communication technologies, life sciences and mechanical patents.

The WIPO ADR procedures aim to create positive opportunities for party settlement. In 2021, the settlement rate in WIPO mediations reached 75% and, even in WIPO arbitrations, 33% of the cases settled before the issuance of a final award.

The WIPO Center’s Role

In its role as administering institution, the WIPO Center maintains strict neutrality and independence and administers cases under the WIPO Arbitration, Expedited Arbitration, Mediation and Expert Determination Rules (WIPO Rules). This includes assisting in the selection of neutrals (mediators, arbitrators and experts). To that effect, the WIPO Center keeps a database of over 2,000 dispute resolution practitioners from more than 100 jurisdictions, including Canada, which range from highly specialized practitioners and experts in all areas of IP to seasoned commercial dispute resolution generalists.

The WIPO Center also facilitates communication, enforces timelines, coordinates finance-related issues, offers guidance on the application of relevant procedural rules and arranges meetings and other support services. Parties can also benefit from its online case administration options, including an online docket (WIPO eADR) and videoconferencing facilities.

The WIPO Center further provides recommended contract clauses and submission agreements and offers access to an online Clause Generator that proposes additional contractual elements based on WIPO case experience. To facilitate submission of a dispute to mediation in the absence of a mediation agreement between the parties (for example in infringement disputes or in cases pending before courts), a party also has the option to submit a unilateral Request for Mediation to the WIPO Center.

In addition, the WIPO Center develops operational and legal frameworks for tailored dispute resolution procedures in a number of specific sectors, such as R&D, information and communication technology (ICT) (including the determination of FRAND licensing terms), life sciences, digital copyright and film and media.

The WIPO Center’s legal staff will be happy to provide further information on WIPO ADR to interested IP professionals and IPIC members. You may contact us at arbiter.mail@wipo.int. 

Upcoming Complimentary WIPO Online Arbitration and Mediation Workshop

IPIC is a proud supporter of this Workshop which aims to promote the understanding of Alternative Dispute Resolution (ADR) options for the resolution of intellectual property (IP) and technology disputes. The Workshop is designed for mediators, arbitration and IP lawyers, in-house counsel, patent and trademark attorneys, and business professionals wishing to familiarize themselves with international mediation and arbitration procedures, or to receive training as neutrals or party representatives.

The Workshop will cover mediation and arbitration procedures, with particular reference to the practical case application of the WIPO Mediation, Arbitration and Expedited Arbitration Rules, an industry view on dispute resolution, keys to drafting effective dispute resolution clauses, ADR for FRAND Disputes, and a look at the move to online meetings and hearings. The presentation faculty includes WIPO mediators and arbitrators, in-house counsel, and WIPO Arbitration and Mediation Center professionals, all experienced in the conduct of international ADR procedures. Ample Q&A opportunities will enable attendees to interact with the program faculty.

WIPO will issue certificates of attendance to people who attended all 3 days of the Workshop, for potential recognition as continuing professional development hours (if recognized under the conditions of their respective professional associations).

• Day 1 – June 8, 2022, from 12:00 to 14:00 EST
• Day 2 – June 9, 2022, from 12:00 to 14:00 EST
• Day 3 – June 10, 2021, from 12:00 to 14:00 EST

For more information and to register please click here.

Supported by:

• International Association for the Protection of Intellectual Property (AIPPI)
• Intellectual Property Institute of Canada (IPIC)
• International Technology Law Association (ITechLaw)