WIPO Alternative Dispute Resolution (ADR) Options for Intellectual Property and Technology Cases pending before National Courts

Where intellectual property (IP) and technology disputes are pending before national courts, WIPO ADR procedures can offer additional benefits in bringing such cases to a successful conclusion.

WIPO ADR may present a suitable opportunity for cases pending before national courts where the parties are willing to explore settlement or need the assistance of an expert in a technical or scientific matter. The WIPO Arbitration and Mediation Center (WIPO Center) administers cases referred to ADR by national courts as well as by other adjudicative bodies, including Intellectual Property and Copyright Offices (IPOs). In accordance with the applicable law, settlement agreements resulting from WIPO mediation may, upon request by the parties, be confirmed by national courts and enforced as court judgments.

Court referral to WIPO Mediation

In a mediation procedure, a neutral intermediary, the mediator, helps the parties to reach a mutually satisfactory settlement of their dispute. Any settlement is recorded in an enforceable contract.

Mediation is an efficient and cost-effective way of settling a case while preserving, and at times even enhancing, the relationship of the parties.

The principal characteristics of mediation are:

Mediation is a non-binding procedure controlled by the parties
Mediation is a confidential procedure
Mediation is an interest-based procedure

Parties involved in proceedings pending before national courts may submit their dispute to WIPO Mediation by filing their agreement for WIPO Mediation with the WIPO Center.

Recommended Model Submission Agreement to WIPO Mediation

“We, the undersigned parties, hereby agree to submit to mediation in accordance with the WIPO Mediation Rules the following dispute:

[brief description of the dispute]

The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language].”

Upon receiving the agreement to WIPO Mediation, the WIPO Center will contact the parties regarding the appointment of the mediator and the applicable fees. While the parties are free to identify a suitable candidate for such appointment themselves, the WIPO Center is available to assist with the provision of a shortlist of qualified candidates taking account of the requirements of the case.

Example of a dispute pending before national courts referred to WIPO Mediation:

A WIPO Mediation of a Biotech Dispute

Unilateral Request for WIPO Mediation

Parties usually use mediation through their joint adoption of a WIPO contract clause or dispute submission agreement. Where there is no mediation clause or agreement between the parties, the WIPO Mediation Rules facilitate submission of a dispute to mediation. This can also be helpful in a court environment that encourages mediation. A party that wishes to propose referring a dispute to WIPO Mediation can submit a Request for Mediation to the WIPO Center, which may then assist both parties in agreeing to use mediation.

Unilateral Request for WIPO Mediation

Court referral to WIPO Arbitration

Arbitration is a procedure in which a dispute is submitted, by agreement of the parties, to one or more arbitrators who make a binding decision on the dispute. In choosing arbitration, the parties opt for a private dispute resolution procedure instead of going to court.

The principal characteristics of arbitration are:

Arbitration is consensual
The parties choose the arbitrator(s)
Arbitration is neutral
Arbitration is a confidential procedure
The decision of the arbitral tribunal is final and easy to enforce

Parties involved in proceedings pending before national courts may submit their dispute to WIPO Arbitration by filing their agreement for WIPO Arbitration with the WIPO Center.

Recommended Model Submission Agreement to WIPO Arbitration

“We, the undersigned parties, hereby agree that the following dispute shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules:

[brief description of the dispute]

The arbitral tribunal shall consist of [a sole arbitrator][three arbitrators]. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute shall be decided in accordance with the law of [specify jurisdiction].”

Upon receiving the agreement to WIPO Arbitration, the WIPO Center will contact the parties regarding the appointment of the arbitrator(s) and the applicable fees. While the parties are free to identify suitable candidates for such appointment themselves, the WIPO Center is available to assist with the provision of a shortlist of qualified candidates taking account of the requirements of the case.

The WIPO Center also offers WIPO Expedited Arbitration services, a form of arbitration that is carried out in a shortened time frame and at a reduced cost.

Example of a dispute pending before national courts referred to WIPO Arbitration:

A Patent Infringement Dispute Submitted to WIPO Arbitration

Court referral to WIPO Expert Determination

Expert determination is a consensual ADR service offered by the WIPO Center in which a technical, scientific or related business issue between the parties is submitted to one or more experts who make a determination on the matter.

The principal characteristics of expert determination are:

Expert determination is consensual
The parties choose the expert(s) with relevant expertise
Expert determination is neutral and flexible
Expert determination is a confidential procedure
The determination of an expert is binding, unless the parties agree otherwise
Expert determination is a flexible procedure

Examples of matters that may benefit from expert determination include:

The valuation of intellectual property assets or the determination of royalty rates;
The interpretation of the claims of a patent;
The extent of the rights that are covered by a license;
The assessment of damages.

Parties involved in proceedings pending before national courts may submit their entire dispute or a specific technical or scientific issue to WIPO Expert Determination by filing their agreement for WIPO Expert Determination with the WIPO Center.

Recommended Model Submission Agreement to WIPO Expert Determination

“We, the undersigned parties, hereby agree to submit to expert determination in accordance with the WIPO Expert Determination Rules the following matter:

[brief description of the matter referred to expert determination]

The determination made by the expert shall [not] be binding upon the parties. The language to be used in the expert determination shall be [specify language].”

Upon receiving the Agreement to WIPO Expert Determination, the WIPO Center will contact the parties regarding the appointment of the expert and the applicable fees. While the parties are free to identify a suitable candidate for such appointment themselves, the WIPO Center is available to assist with the provision of a shortlist of qualified candidates taking account of the requirements of the case.

Current Collaborations

Albania	General Directorate of Industrial Property (DPPI) and Magistrates School of the Republic of Albania	The WIPO Center collaborates with DPPI and the Magistrates School of the Republic of Albania in the promotion of the use of ADR options for intellectual property disputes in Albania.
Canada	Copyright Board of Canada	The WIPO Center collaborates with the Copyright Board of Canada in the promotion of the use of ADR options for copyright tariff, royalty, and related disputes in Canada.
China	Supreme People's Court (SPC)	The WIPO Center collaborates with the SPC in the promotion of the use of mediation for intellectual property disputes in China.
Egypt	Ministry of Justice	The WIPO Center collaborates with the Ministry of Justice of Egypt in the promotion of the use of ADR options for intellectual property disputes in Egypt.
France	3rd chamber of the First Instance Court of Paris	The WIPO Center collaborates with the 3rd chamber of the First Instance Court of Paris in the promotion of the use of mediation for intellectual property disputes in France.
Germany	Munich Regional Court	The WIPO Center collaborates with the Munich Regional Court in the promotion of the use of ADR options for patent/FRAND disputes.
Mexico	Federal Court of Administrative Justice (TFJA)	The WIPO Center collaborates with the Sala Especializada en Materia de Propiedad Intelectual of the TFJA in the promotion of the use of ADR options for industrial property disputes in Mexico.
Mongolia	Judicial Training, Research and Information Institute of Mongolia	The WIPO Center collaborates with the Judicial Training, Research and Information Institute of Mongolia in the promotion of the use of ADR options for industrial property disputes in Mongolia.
Paraguay	Supreme Court of Justice of Paraguay	The WIPO Center collaborates with the Supreme Court of Justice of Paraguay in the promotion of the use of ADR options for intellectual property disputes in Paraguay.
Republic of Korea	Ministry of Justice	The WIPO Center collaborates with the Ministry of Justice in the promotion of the use of ADR options for intellectual property disputes in the Republic of Korea.
Republic of Korea	Patent Court of Korea	The WIPO Center collaborates with the Patent Court of Korea in the promotion of the use of ADR options for intellectual property disputes in the Republic of Korea.
Qatar	Qatar International Court and Dispute Resolution Center (QICDRC)	The WIPO Center collaborates with QICDRC in the promotion of the use of ADR options for intellectual property disputes in Qatar.
Singapore	Ministry of Law	The WIPO Center collaborates with the Ministry of Law in the promotion of the use of ADR options for intellectual property disputes in Singapore. The Ministry of Law has designated the WIPO Center as mediation service provider in Singapore.
Spain	European Union Trademark Court in Spain	The WIPO Center collaborates with the European Union Trademark Court in Spain in the promotion of the use of mediation for intellectual property disputes in Spain.
Thailand	Central Intellectual Property and International Trade Court (CIPITC)	The WIPO Center collaborates with CIPITC in the promotion of the use of ADR options for intellectual property disputes in Thailand.
United Republic of Tanzania	Judiciary of Tanzania	The WIPO Center collaborates with the Judiciary of Tanzania in the promotion of the use of ADR options for intellectual property disputes in Tanzania.

Contact information

WIPO Arbitration and Mediation Center (Geneva)
34, chemin des Colombettes
1211 Geneva 20
Switzerland

T +4122 338 8247
F +4122 740 3700

WIPO Arbitration and Mediation Center (Singapore)
Maxwell Chambers Suites
28 Maxwell Road #02-14
Singapore 069120

T +65 6225 2129
F +65 6225 3568