Efficient Dispute Resolution - WIPO Alternative Dispute Resolution ...

Efficient Dispute Resolution - WIPO 

Alternative Dispute Resolution 

Mechanisms 

Barcelona, November 28, 2011 

Judith Schallnau, Lawyer, WIPO Arbitration and 

Mediation Center

2 

Dispute Resolution Needs in R&D and 

Technology Transfer (I) 

International 

International R&D collaboration, different national laws 

Industry partners, research institutes, universities from 

different countries may have diverging expectations 

and understandings of commercial and legal concepts 

Need for neutral procedure (e.g. law, language, place) 

Neutral expertise 

Complex questions related to IP and technical issues 

Need for an experienced neutral intermediary 

Judith Schallnau, WIPO Arbitration and Mediation Center, Barcelona, November 28, 2011

3 

Dispute Resolution Needs in R&D and 

Technology Transfer (II) 

Efficiency 

Large investments in time and money, high competitive 

pressure 

Need for time- and cost-effective procedures 

One procedure for differences pertaining to IP protected in 

different countries 

Confidentiality 

New developments, patentability 

Need for confidentiality (existence, content, outcome) 

Preserving party relationships 

Long-time collaborations can be preserved where 

amicable solutions are sought, e.g. in a mediation 


4 

Court Litigation 

Hurdles in litigating multi-jurisdictional disputes: 

Different legal systems 

Expensive & lengthy 

Risk of contradictory results 

Cross-border injunctions frequently not favored 

Consolidation of foreign patent infringements frequently not 

favored 


Patent Litigation 

5 

Country Characteristic of Legal System Average Length Average Cost 

France 

Germany 

- Civil Law 

- Unified Litigation 

- No specialized courts 

- Civil Law 

- Bifurcated Litigation 

- Specialized court for invalidity 

First Instance: 18-24 months 

Appeal: 18-24 months 

€80,000-150,000 (1 st Inst.) 

Bifurcated Litigation First Instance: 12 months 

€50,000 (1 st Inst.) 

Appeal: 15-18 months €70,000 (App.) 

- Civil Law 

Italy - Unified Litigation 

- Specialized courts 

- Civil Law 

Spain - Unified Litigation 

- Commercial Courts 

- Common Law 


UK - Specialized courts 

- Mediation promoted 

China 

Japan 

USA 

- Civil il Law 



- Civil Law 



- Common Law 


- Specialized court of appeals 

(CAFC) 

- Jury trial available 

- Mediation promoted 

First Instance: few months – 

24 months 


First Instance: 12 months 



Court of Appeal: 12 months 

Supreme Court: 24 months 


Appeal: 3 months 


Appeal: 9 months 

First Instance: up to 24 

months 

Appeal: 12 + months 

€50,000-150,000 (1 st Inst.) 

€30,000-70,000 (App.) 

€100,000 (1 st Inst.) 

€50,000 (2 nd Inst.) 

€750,000-1,500,000 (1 st 

Inst.) 

€150,000-1,500,000 (App.) 

€150,000-1,500,000 

(Supreme Court) 

USD150,000 (1 st Inst.) 

USD50,000 (App.) 

USD300,000 (1 st Inst.) 

USD100,000 (App.) 

Up to USD4,000,000 (1 st 

Inst.) 

USD150,000-250,000 (App.) 

Source: This chart is based on figures provided in Patent Litigation - Jurisdictional Comparisons, Thierry Calame, 

Massimo Sterpi (ed.), The European Lawyer Ltd, London 2006. 


What is Alternative Dispute Resolution 

(ADR) 

6 

A range of procedures to resolve disputes « out-of-court of » in a 

private forum with the assistance of an independant 

intermediary (e.g., mediator, arbitrator, expert) 

Mediation 

Arbitration 

Expert Determination 

Combined with a court procedure, i.e. when mandated by 

competent court 

Normally consensual (ADR contract clause or submission 

agreement) 


WIPO Arbitration and Mediation Center 

7 

Offices in Geneva and Singapore 

ADR of IP Disputes requires a specialized ADR provider 

WIPO panel members experienced in IP and technology - able to 

deliver informed results efficiently 

Very competitive WIPO fee structure 

Status as international agency 

Services include mediation, (expedited) arbitration, expert 

determination 

Parties can shape the process with the help of WIPO Rules, 

contract clauses 

Active case management: time and cost 

WIPO ECAF (online case management) 

Procedural guidance, training programs 


8 

Mediation, Arbitration, Expert Determination 

Mediation: an informal procedure in which a neutral intermediary, 

the mediator, assists the parties in reaching a settlement of their 

dispute, based on the parties’ respective interests. The mediator 

cannot impose a decision. The settlement agreement has the force 

of a contract. 

Arbitration: a procedure in which the parties submit their dispute to 

one or more chosen arbitrators, for a binding and final decision 

(award) based on the parties’ respective rights and obligations and 

enforceable as an award under arbitral law. 

Expert Determination: a procedure in which the parties submit a 

specific matter (e.g. technical question) to one or more experts who 

make a determination on the matter, which can be binding unless 

the parties have agreed otherwise. 


9 

ADR in R&D and Technology Transfer 

Agreements 

Consistency 

Agreements involving multiple 

parties 


10 

WIPO Dispute Resolution Clause 

Mediation 

Future disputes (dispute resolution clause in initial contract) 

"Any dispute, controversy or claim arising under, out of or relating 

to this contract and any subsequent amendments of this contract, 

including, without limitation, its formation, validity, binding effect, 

interpretation, performance, breach or termination, as well as noncontractual 

claims, shall be submitted to mediation in accordance 

with the WIPO Mediation Rules. The place of mediation shall be 

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

[specify language].“ 

Existing diputes (separate submission agreement) 

"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]." 


WIPO Dispute Resolution Clause 

Mediation followed by Arbitration 

11 

Try mediation before arbitration, at 

least until 

lapse of time period 

termination 

Combining the benefits 

arbitration ti well-prepared 


WIPO Cases: Types of Procedure 

12 

Expedited Arbitration 

15% 

Mediation 

51% 

Arbitration 

34% 


13 

Mediation Process 


14 

WIPO Mediation in the Automotive Sector (I) 

U.S. company/ Swiss company 

Patent infringement dispute related to U.S. patents owned by 

U.S.company (automotive sector) 

Settlement agreement 2007 

Dispute Resolution clause: WIPO Mediation followed by WIPO 

Arbitration 

Request for mediation in May 2009 

WIPO Center proposed list of candidates 

Parties chose from such list patent practitioner, knowledge of U.S. 

Patent Laws, fluent in English, experience in mediating patent 

infringement disputes 


15 

WIPO Mediation in the Automotive Sector (II) 

Two-day hearing in August (June) in Geneva, WIPO 

Mediator gave introduction, explained rules of the hearing (e.g. 

confidentiality, caucus) and his role 

Early agreement on framework for royalty payments 

Further discussions on business aspects 

Settlement in the afternoon of second day: 

« Term sheet » down-payment, annual instalments, net 

sales based royalty 

Re-drafted d original i licensing i agreement, final agreement 

until September 2009 

End of 2-years dispute within 5 months, parties avoided U.S. arbitration/ 

high costs, further collaboration possible 


16 

•One Exchange of Pleadings 

•Shorter Time Limits 

•Sole Arbitrator 

•Shorter Hearings 

•Fixed Fees 


17 

WIPO Cases Related to R&D and 

Technology Transactions 

Parties involved 

Large companies 

SMEs 

Research organizations 

Universities 

iti 

Start-ups / Spin-offs 

Remedies 

Damages 

Payment of royalties 

Delivery of products 

Continuation of R&D 

activities 

Re-negotiation agreement 

Subject matter 

Judith Schallnau, WIPO Arbitration and Mediation Center, Barcelona, November 28, 2011 

Contractual and noncontractual 

R&D collaboration 

agreements 

Patent license agreements 

License option agreement 

Patent infringement 

Illegal use of Design 

Domestic / International 

Disputes 

Europe, North America, 

Asia

WIPO Cases: Business Areas 

18 

Other 21% 

Pharmaceuticals 

15% 

Chemistry 1% 

Entertainment 10% 

Mechanical 15% 

Luxury Goods 4% 

Life Sciences 3% 

IT 31% 


WIPO Cases: Subject Matter 

19 

Other 20% 

Patents 30% 

Copyright 12% 

Trademarks 14% 

IT 16% 


20 

Settlement in WIPO Administered Cases 

Mediation 

Arbitration 

Non-Settlement 

30% 

Settlement 

44% 

Non-Settlement 

(Aw ard) 

56% 

Settlement 

70% 


21 

Questions 


Additional Information 

22 

Download model clauses: http://www.wipo.int/amc/en/clauses/ 

Contact information: 

General queries and case filing: arbiter.mail@wipo.int 

judith.schallnau@wipo.int; int; +41 22 338 7256 

Posted information on procedures, neutrals and case examples: 

http://www.wipo.int/amc/en/ 

i t/ / / 

WIPO International Survey on Dispute Resolution in Technology 

Transactions: http://www.wipo.int/amc/en/index.html 

Thank you!

Efficient Dispute Resolution - WIPO Alternative Dispute Resolution ...

Create successful ePaper yourself

Delete template?

Save as template?