Time- and Cost-Efficient Alternative Dispute Resolution of R&D and Technology Transfer Disputes for TISCs
Alternative Dispute Resolution (ADR) procedures constitute alternatives to court litigation. ADR is appropriate for most intellectual property (IP) related commercial disputes, and especially between parties from different jurisdictions. ADR can enhance the parties control over the dispute resolution process and, if well managed, it can save time and money. In addition, its consensual nature often results in a less adversarial process, allowing the parties to begin, continue, or improve business relationships.
Technology and Innovation Support Centers (TISCs) provide technology information and related services to researchers, inventors, and entrepreneurs worldwide. The WIPO TISC program and the WIPO Arbitration and Mediation Center cooperate to raise awareness of WIPO ADR, bringing practical information to the attention of the TISC program participants. TISCs benefit from a 50% reduction in registration and administration fees for ADR services provided by the WIPO Center.*
R&D and Technology Transfer
International and domestic innovation, research and development (R&D) and transfer of technologies involve a rich variety of contracts and transactions, including research contracts, collaborative projects, licensing, joint ventures, alliances, spin-offs and buyer-supplier relationships.
Such collaborations can involve complex legal, commercial or management issues, often including related intellectual property (IP) rights. Also, research partners from different institutional backgrounds may have diverging expectations and understandings of creating, using and exploiting IP rights.
Areas of Dispute
A careful choice of dispute resolution framework should feature in negotiations of sometimes multiple contracts at different stages of R&D activities, commercialization and technology transfer processes. Where several contracts relating to R&D collaborations are concluded at different stages of a project, consistent dispute resolution provisions should be considered to enable an efficient dispute resolution process and, if necessary, the potential consolidation of disputes.
WIPO Arbitration and Mediation Center
With offices in Geneva, Switzerland, and in Singapore, the WIPO Arbitration and Mediation Center offers ADR options to enable parties to efficiently settle their domestic or cross-border commercial disputes. The ADR options offered by the WIPO Center are mediation, arbitration, expedited arbitration, and expert determination. The WIPO Center is international and specialized in IP and technology disputes. It has a strong focus on controlling the time and cost of its proceedings.
WIPO ADR procedures are organized to stimulate positive opportunities for party settlement. Almost 70% of the mediation procedures administered by the WIPO Center have settled. Even in arbitration, 40% of WIPO cases settle before any formal decision is issued.
WIPO ADR Services
- Procedural advice in choosing ADR options
- Model mediation and arbitration clauses to insert in contracts
- Case administration under the WIPO Rules in the event of a dispute
- Communication and meeting support in cases
- Training sessions on ADR of IP and technology related disputes
WIPO Rules and Neutrals
WIPO ADR Rules are suitable for all commercial disputes. They additionally feature provisions to address specific needs in IP and technology disputes, such as on confidentiality and technical evidence.
Parties can draw upon an extensive database of local and international independent WIPO arbitrators, mediators and experts, skilled in all areas of IP and ADR.
How to Submit a Dispute to WIPO ADR?
To facilitate agreement between contract parties to refer future disputes to WIPO ADR, the WIPO Center provides model contract clauses.
Joint agreement to submit a dispute to WIPO Mediation or Arbitration:
- If parties are already facing a dispute, they can refer such dispute to WIPO ADR by completing and signing a submission agreement.
Unilateral submission of a dispute to WIPO Mediation:
- In the absence of a dispute resolution agreement, a party that wishes to propose submitting a dispute to WIPO Mediation may submit a unilateral request to the WIPO Center by email to arbiter.mail@wipo.int, and to the other party.
- The parties may agree on the appointment of the mediator, arbitrator or expert, or they may request assistance from the WIPO Center to identify suitable candidates that satisfy the parties’ requirements.
- The parties are free to determine where they want WIPO ADR proceedings to take place.
Case Study: A WIPO Mediation in the Area of R&D
A major European research institute and a French company entered into a license agreement. The agreement related to a technology in the area of building materials with an application for patent filed with the European Patent Office. The parties included in their contract a multi-tier dispute resolution clause providing for WIPO mediation, followed by court litigation. Three years after the conclusion of the agreement the company alleged the invalidity of the license agreement and requested a refund of royalty payments in light of the rejection of the patent application by the European Patent Office. The research institute commenced mediation proceedings requesting payment of the royalty rates. The parties invited the WIPO Center to provide them with a list of mediator candidates experienced in mediation, drafting licensing agreements and specialized in patent law.
One of those mediators was selected by the parties. The mediator conducted a preparatory telephone conference with the parties including an explanation of mediation principles, the submission of documents as well as details of the mediation meeting, such as the timetable, venue and party representation. Following a dinner which proved useful to restore communication between the parties, a one-day mediation session took place in Munich, Germany. At the end of the mediation session the parties were able to conclude a settlement agreement. This settlement agreement included options for the amendment of the license agreement and payment of royalty rates, based on future decisions on the patent application, and the additional option to conclude a research and development agreement between the parties. Thus, the mediation settled within less than three months after its commencement and enabled further extended collaboration between the parties.
International Cooperation
To optimize dispute resolution in the R&D and technology transfer sector, the WIPO Center collaborates with relevant stakeholders and organizations. This may include organization of joint events and training, for example, covering discussions on best practices, and the development of model agreements.
Parties involved in R&D collaborations and technology transfer transactions often use model agreements as a basis for drafting and negotiating their contracts. Examples of model agreements which recommend WIPO mediation and expedited arbitration options include the Development of a Simplified Consortium Agreement (DESCA 2020) model consortium agreement for the European Union research funding program Horizon 2020, the Intellectual Property Agreement Guide (IPAG) model agreements developed by Austrian universities and corporations, the German Federal Ministry of Economics and Technology (BMWi) sample agreements for R&D cooperation, and the Spanish Patent and Trademark Office (OEPM) model agreements.
Contact
| Arbitration and Mediation Center Geneva |
Arbitration and Mediation Center Singapore |
|---|---|
| 34, chemin des Colombettes P.O Box 18 1211 Geneva 20 Switzerland T +41 338 8247 or 0800 888 549 F +4122 740 3700 or 0800 888 550 |
Maxwell Chambers 28 Maxwell Road #02-14 Singapore 069120 T +65 6225 2129 F +65 6225 3568 |
General queries: arbiter.mail@wipo.int
* Institutions seeking to benefit from the reduction should include a note in the request submitted to the WIPO Arbitration and Mediation Center indicating their status as a TISC. Individuals should include an official document from a TISC with the request indicating that they are affiliated with or are clients of this TISC.