An expanding role for IP offices in alternative dispute resolution

By Leandro Toscano and Oscar Suarez, WIPO Arbitration and Mediation Center

A startup finds out that another company is using its patent-protected invention without permission. Two small companies are fighting over a trademark and are locked in opposition procedures before an IP Office. A software developer is negotiating a contract to develop a mobile application with a company based in a different country and is eager to avoid potential future disputes. What can these IP stakeholders do to protect their interests?

They could go to court to resolve their differences, but litigation tends to be expensive, time-consuming, and often lacks IP specialization; also, court litigation is adversarial, hindering business relations between the parties. Or they could opt for voluntary alternative dispute resolution (ADR) procedures, such as mediation and arbitration, which are gaining popularity as means of settling IP disputes and reducing negative fall-out. In collaboration with the WIPO Arbitration and Mediation Center (WIPO Center), a growing number of national IP and Copyright Offices are gearing up to bring the advantages of ADR to their IP stakeholders.

So how exactly can IP Offices contribute to reducing the impact of disputes arising in innovation and creative processes?

In 2015, WIPO produced a Guide on Alternative Dispute Resolution for Intellectual Property Offices and Courts. The guide captures the WIPO Center’s growing experience in the area of ADR and offers practical guidance notably to IP Offices seeking to integrate and promote ADR options in their portfolio of services. A substantially updated edition of the guide was published in 2018.

The complexity of IP disputes is often compounded by the involvement of parties from different countries and of IP rights that are territorial in nature. ADR is tailored to these conditions and, where IP Offices are involved, contributes to the efficient use of public resources. For example, ADR may allow parties to settle trademark opposition cases before resources are used by an IP Office to issue a decision.

Raising awareness of ADR options

The WIPO Center collaborates with IP Offices in a number of ways.  Increasingly, for example, IP Offices around the world are raising awareness about the advantages of ADR. This may include developing country-specific information materials for interested parties concerning ADR options, or offering joint information and practical training events on mediation and arbitration for IP and related disputes. Or it might involve referring inquiries they receive from parties to the WIPO Center for further assistance (notably in infringement cases). The WIPO Center is available to assist parties that wish to commence a WIPO ADR proceeding as an alternative to court litigation. This could take the form of parties using a WIPO model contract clause or invoking, through a unilateral Request for Mediation or otherwise, the WIPO Center’s Good Offices services to facilitate direct settlement between parties or the submission of a dispute to mediation or arbitration. Examples of IP Offices ADR aware-ness raising are:

IP Australia

In January 2017, IP Australia and the WIPO Center launched an initiative to provide ADR options for the resolution of IP and technology disputes in Australia. This service offers Australian businesses improved access to mediation, arbitration and expert determination, and enables parties to settle international IP disputes in a time- and cost-efficient manner. To this end, the WIPO Center makes available to interested parties online communication options, including an online docket and videoconferencing facilities, at no cost.

Mexican Institute of Industrial Property (IMPI Mexico)

IMPI Mexico and the WIPO Center entered into a cooperation agreement in September 2014 to raise awareness and promote the use of ADR for IP and technology disputes in Mexico. Since then, IMPI Mexico and the WIPO Center have worked in close collaboration to explain the advantages of ADR to IP stakeholders in Mexico, including multinational companies, small and medium-sized enterprises, startups, universities, inventors and entrepreneurs. Examples of activities include seminars, webinars and workshops, in collaboration with Mexican IP associations, and awareness-raising campaigns via social media channels.

Case administration

Another key area of collaboration is case administration. Some IP Offices develop or encourage the use of ADR in the context of proceedings pending before them, most notably, trademark opposition proceedings. Collaboration with the WIPO Center may include the administration of cases submitted by parties to ADR under such schemes by the WIPO Center. Examples of ADR case administration are:

Intellectual Property Office of Singapore (IPOS)

Under its collaboration with IPOS, the WIPO Center has participated in the development of a mediation option for trademark and patent proceedings, and an expert determination option for patent proceedings pending before IPOS, and administers such proceedings. IPOS also offers a mediation promotion scheme to encourage parties in IPOS proceedings to choose mediation as an alternative to a hearing. The scheme funds certain costs incurred by parties in a mediation procedure, regardless of the outcome.

Case example: A WIPO mediation of trademark opposition proceedings at IPOS

A Singaporean medical service provider filed an opposition with IPOS against the application for the registration of a trademark by a Malaysian company, alleging similarity of color and other features to its trademark. The parties agreed to submit the dispute to WIPO mediation in Singapore. The WIPO Center proposed a Singaporean IP lawyer as mediator. After a day of intense negotiations, the parties reached a settlement under which the applicant agreed to file a new application on agreed terms.

Intellectual Property Office of the Philippines (IPOPHL)

Mediation is mandatory for certain types of IP disputes administered by IPOPHL. For example, for administrative complaints about violation of IP rights and/or unfair competition; inter partes cases, such as trademark opposition and cancellation proceedings; disputes involving technology transfer payments; and disputes relating to the terms of a license involving an author’s rights to public performance or other communication of their work. The WIPO Center collaborates with IPOPHL in the administration of international mediation proceedings involving IP rights in the Philippines.

Patent Office of the Republic of Poland (PPO)

In 2018, the PPO launched a mediation option for trademark opposition proceedings, in collaboration with the WIPO Center, which administers such proceedings. Under this scheme, the parties benefit from the reimbursement of 50 percent of PPO trademark opposition fees when they reach a settlement within a certain period.

Ministry of Culture, Sports and Tourism of the Republic of Korea (MCST)

The Korea Copyright Commission (KCC) and the Korea Creative Content Agency (KOCCA) – both agencies under MCST – administer mediation proceedings concerning copyright and related rights, and content-related rights in the Republic of Korea. When related international disputes arise, KCC and KOCCA also offer a WIPO mediation option, administered by the WIPO Center. To encourage the use of mediation for these disputes, MCST and the WIPO Center recently concluded an agreement to support ADR-related activities, including a mediation promotion scheme.

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. 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.

ADR options in research and development (R&D) model agreements

Parties may consider ADR options in the context of other services offered by IP Offices, including the provision of R&D model agreements. Parties involved in R&D collaborations and technology transfer transactions often use such models as a basis for negotiating and drafting their contracts. To support efficient dispute resolution in this area, the WIPO Center collaborates with concerned stakeholders and entities in the development and dissemination of model agreements for R&D collaborations, which include WIPO mediation and expedited arbitration as options for parties. An example of ADR options in R&D model agreements is:

Spanish Patent and Trademark Office (OEPM)

OEPM, in collaboration with R&D stakeholders, has developed contract templates – non-disclosure, license, material transfer, and R&D agreements – for R&D collaborations that the Office makes available to interested users. These templates contain model dispute resolution clauses, including referral of disputes to WIPO Mediation followed by WIPO Expedited Arbitration or court litigation.

In recent years, a growing number of IP Offices have begun collaborating with the WIPO Center to develop or enhance their ADR services, especially mediation. The shared goal of these initiatives is to facilitate time- and cost-effectiveness in resolving disputes involving IP rights issued or protected in their jurisdiction. Such ADR services are increasingly recognized as part of innovative new client facilities being offered by IP Offices.