WIPO is the World Intellectual Property Organization, which is the global forum for intellectual property (IP) services, policy, information and cooperation. It was founded in 1967 and is part of the United Nations. Its mission consists in achieving a balanced and effective international IP system, thus enabling innovation and creativity for the benefit of all.
The WIPO Arbitration and Mediation Center, established in 1994, offers time and cost-efficient alternative dispute resolution (ADR) options for IP disputes, amongst which are mediation, arbitration, expedited arbitration and expert determination, to enable private parties to settle either domestic or cross-border commercial disputes.[1]
WIPO Arbitrations often involve disputes over the following issues:[2]
- licensing agreements (trademarks, patents, etc.);
- research and development agreements;
- technology transfer agreements;
- distribution agreements and franchising agreements;
- data processing agreements;
- art marketing agreements;
- digital copyright;
- TV distribution and formats;
- film production.
The WIPO Arbitration and Mediation Center has a role in the administration of cases. It provides assistance with the selection of mediators, arbitrators and experts in intellectual property disputes and administers the financial aspects of the proceedings. It maintains a database of over 2,000 dispute resolution practitioners and experts from more than 100 jurisdictions, with knowledge in the areas of patents, trademarks, copyright, designs and other forms of intellectual property.[3] It also ensures communication between the parties, arbitrators and experts.
Standard clauses for WIPO Arbitration are provided by the Organisation but the parties may also refer their dispute to WIPO Arbitration once it has arisen.
Some of the advantages of WIPO Arbitration are:[4]
Party autonomy – flexibility: as with most arbitrations, in WIPO Arbitrations, the parties may choose the applicable law, place and language of the proceedings. The process may also be faster compared to national courts, which, as a result, can lead to cost savings;
A single, specialised procedure for intellectual property disputes: through WIPO Arbitration, the parties can agree to resolve in a single procedure a dispute involving intellectual property that is protected in a number of different countries, thus avoiding the expense and complexity of multi-jurisdictional litigation, and the risk of inconsistent outcomes;
Neutrality: the parties are able to choose a neutral law and language, thus avoiding any domestic court advantage that one of the parties may enjoy in court-based litigation, where familiarity with the applicable law and local processes can offer significant strategic advantages;
Confidentiality: the proceedings and the award are in principle confidential but the parties can agree otherwise. This is an important feature when commercial reputations and trade secrets are involved (Articles 75-78 of the 2021 WIPO Arbitration Rules);
Finality and enforceability of the awards: finally, the award under WIPO Arbitration is not subject to appeal and is recognised without review on the merits, pursuant to the New York Convention, in all major jurisdictions.
The fact that IP disputes are not dealt with by a judge who may lack expertise in common courts, and where the hearings are public are, therefore, clear advantages of WIPO Arbitration.
Other General Rules
Historically, there was an assumption that IP rights were of public policy interest and, thus, not arbitrable. Today, it is beyond dispute that most IP cases are arbitrable, at least when it comes to an international context, with the exception of the question of registration of IP rights by the authorities, generally dealt with before national courts.[5]
Regarding the seat of arbitration, according to Article 38 of the 2021 WIPO Arbitration Rules, unless the parties have elected one, the place of arbitration is decided by the Center, taking into consideration any observations of the parties and the circumstances of the arbitration.
Pursuant to Article 17(b) of the 2021 WIPO Rules, the time limit set for the appointment of the arbitral tribunal, where the tribunal is constituted of three arbitrators, is 50 days.
Also, the time limit in principle for the tribunal to render the final award in a WIPO Arbitration is 12 months, as provided under Article 65(a) of the 2021 WIPO Rules. This is longer in comparison with ICC arbitrations where, under the 2021 ICC Rules, the time limit for the final award is six months (Article 31.1 of the 2021 ICC Rules).
WIPO Arbitrations have recently dramatically increased in number, with the most cases recorded in 2022.[6]
On 1 July 2021, the WIPO revised its Arbitration Rules. The innovations mainly concern remote hearings, adopted as a response to the COVID-19 pandemic, the obligation to disclose third-party funder agreements, thus reflecting modern international arbitration trends, and decreased costs for some disputes.[7]
A Dematerialised Process
Pursuant to Article 37(a) of the 2021 WIPO Rules, the Tribunal can conduct the arbitration as it considers appropriate, save for mandatory provisions under the law applicable to the arbitration.
Article 55 of the 2021 WIPO Rules then provides that the tribunal may, after consultation with the parties, decide whether to conduct hearings remotely (by videoconference) or in-person.
Additionally, Article 4(a) of the Rules makes electronic communications the default mode of contact between the parties, the Center and the tribunal.
Disclosure of Third-Party Funding Agreements
According to Article 9(vii) of the 2021 WIPO Rules, in order to prevent conflicts of interest, the parties are now obliged to reveal the identity of third-party funders, if any, in the Request for Arbitration or, if the agreement is concluded later, disclose it promptly to the parties, the arbitrators and the Center.
Similarly, the Answer to the Request must include the identity of any third-party funder, pursuant to Article 11(b) of the Rules.
Reduction of Fees Under WIPO Arbitration for SMEs
The Center offers a 25% reduction on registration and administration fees if one of the parties to the dispute is a small or medium-sized enterprise (SME).[8]
Conclusion
In recent years, there has been a considerable shift towards arbitration for disputes involving intellectual property rights and the WIPO Center stands at the forefront of ADR for IP disputes.[9] In this regard, WIPO Arbitration can be a valuable tool to resolve these disputes owing to its flexibility, practicality, confidentiality and the finality of arbitration awards.
[1] WIPO Mediation and Arbitration Center website: https://www.wipo.int/amc/en/center/index.html (last accessed: 6 November 2023).
[2] WIPO Website, WIPO Caseload Summary.
[3] WIPO Website, WIPO Neutrals.
[4] WIPO Website, ADR Advantages.
[5] M. Woller, M. Pohl, IP Arbitration on the Rise, 16 July 2019, https://arbitrationblog.kluwerarbitration.com/2019/07/16/ip-arbitration-on-the-rise/ (last accessed 6 November 2023).
[6] WIPO Website, WIPO Caseload Summary; M. Woller, M. Pohl, IP Arbitration on the Rise, 16 July 2019, https://arbitrationblog.kluwerarbitration.com/2019/07/16/ip-arbitration-on-the-rise/ (last accessed 6 November 2023).
[7] W. Rydzinska, Revision of the WIPO Arbitration Rules: Adapting to an Increasingly Remote Setting In Technology Disputes, 27 September 2021, https://arbitrationblog.kluwerarbitration.com/2021/09/27/revision-of-the-wipo-arbitration-rules-adapting-to-an-increasingly-remote-setting-in-technology-disputes/ (last accessed 6 November 2023).
[8] WIPO Website, WIPO Schedule of Fees and Costs, point 9.
[9] I. de Castro, H. Wollgast et al., Recent Trends in WIPO Arbitration and Mediation, 21 December 2022, https://globalarbitrationreview.com/guide/the-guide-ip-arbitration/second-edition/article/recent-trends-in-wipo-arbitration-and-mediation (last accessed 6 November 2023).