wipo arbitration and mediation center...oct 06, 2007 · wipo arbitration and expedited arbitration...
TRANSCRIPT
AIPPI FORUM Singapore, October 6, 2007
Session XII
IP ADR and the Experience of the WIPO Arbitration and Mediation Center
Erik WilbersWorld Intellectual Property Organization (WIPO)
Geneva, Switzerland
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
Intellectual Property Litigation
• Median cost US patent litigation: US$ 1-4 million (AIPLA 2005)
Not counting management time and opportunity cost
• Much intellectual property litigation is multi-jurisdictional
• IBA 2005 Survey: not enough intellectual property specialization in courts
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
Intellectual Property Litigation Expense (U.S.)
$0.00
$1'000'000.00
$2'000'000.00
$3'000'000.00
$4'000'000.00
$5'000'000.00
$6'000'000.00
Copyright Trademark TradeSecret
Patent
< 1m1 - 25m> 25m
AIPLA Economic Survey 2005 (Mark Partridge)
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
Patent Litigation in Various JurisdictionsCountry Characteristic of Legal System Average Length Average Cost
France - Civil Law - Unified Litigation - No specialized courts
First Instance: 18-24 months Appeal: 18-24 months
€80,000-150,000 (1st Inst.)
Germany - Civil Law - Bifurcated Litigation - Specialized court for invalidity
First Instance: 12 months Appeal: 15-18 months
€50,000 (1st Inst.) €70,000 (App.)
Italy - Civil Law - Unified Litigation - Specialized courts
First Instance: few months – 24 months Appeal: 18-24 months
€50,000-150,000 (1st Inst.) €30,000-70,000 (App.)
Spain - Civil Law - Unified Litigation - Commercial Courts
First Instance: 12 months Appeal: 12-18 months
€100,000 (1st Inst.) €50,000 (2nd Inst.)
UK - Common Law - Unified Litigation - Specialized courts - Mediation promoted
First Instance: 12 months Court of Appeal: 12 months House of Lords: 24 months
€750,000-1,500,000 (1st Inst.) €150,000-1,500,000 (App.) €150,000-1,500,000 (House of Lords)
China - Civil Law - Bifurcated Litigation - Specialized courts
First Instance: 6 months (in law) Appeal: 3 months, no limit when foreigners litigate
Not Available
Japan - Civil Law - Bifurcated Litigation - Specialized courts
First Instance: 14 months Appeal: 9 months
Not Available
USA - Common Law - Unified Litigation - Specialized court of appeals (CAFC) - Jury trial available - Mediation promoted
First Instance: up to 24 months Appeal: 12 + months
Up to $4,000,000 (1st Inst.) $150,000-250,000 (App.)
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
Analyzing Dispute Resolution Experience• Did the outcome obtained require the process
that was followed?Did parties really need a third-party neutral?If so, did it really need to be a decision-maker?If so, did it really need to be a judge?
• Often both parties expect to win• What is ‘right’ may not be constructive
« In business you always meet twice »A compromise can be a win
• Most cases end in settlement
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
U.S. Federal Court Civil Action Resolution
22%
63%
14% 1%
No actionDiscoveryPretrialAt Trial
Federal Judicial Center, September 30, 2006 (MP)
Cases Filed: 272,644Cases Tried: 3,555
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
IP-Specific Dispute Resolution Factors• Internationalization of creation/use of IP
Calls for cross-border solutions• Technical and specialized nature of IP
Calls for specific expertise of ‘neutral’• Short product and market cycles
Calls for time-efficient procedures• Confidential nature of IP
Calls for private procedures• Collaborative nature of IP creation and
commercializationCalls for mechanisms that preserve relations
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
In-House Attitudes on Alternatives to Litigation
0%10%20%30%40%50%60%
Arbitration Mediation
FavorNeutralDisfavor
Corporate Legal Times, October 2004 (MP)
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Arbitration and Mediation Center• Resource center
IP ADR guidance, workshops, publications• Administering authority
Contract clauses and rules for IP disputesWIPO Arbitration and Expedited ArbitrationWIPO MediationWIPO Expert Determination (new)
WIPO list of arbitrators, mediators, expertsSpecialized in different areas of IP; detailed profilesFrom 70 countries in all regionsWIPO not limited by list
Administration of cases• Design and operation of procedures for
special categories of IP disputes (e.g. UDRP)
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Rules• Suitable for all commercial disputes• Accommodating ‘international cases’• Party autonomy and flexibility• Including IP-oriented provisions
ConfidentialityExistence of caseDisclosures during caseOutcome of case
Court interim measures (Arbitration Rules)Evidence (Arbitration Rules)
ExpertiseExperiments
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Cases: Scope and Numbers• Domestic and international• Prior clause and posterior submission• Contractual and (occasionally) non-
contractual• Arbitration and mediation (in each ‘direction’)• Value from Euro 20,000 to US$ 600 million• Caseload
Close to 100 requests for arbitrationClose to 75 requests for mediationPosted (‘sanitized’) case exampleshttp://www.wipo.int/amc/en/center/caseload.html
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Cases: Subject Matter
• Patent licenses• R&D agreements (biotech/pharma) • Patent infringement• Copyright / collecting societies• Software / information technology• Trademark co-existence agreements• Trademark / domain name issues• General including IP (construction, finance,
employment)
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Cases: Mediation ExampIe (part 1)
• Parties from Asia and Europe
• R&D company disclosed patented invention to manufacturer during consulting contract, without transfer or license of patent rights
• Manufacturer started selling products which R&D company alleged used its patent
• Negotiation of patent license failed; threat of multi-jurisdictional infringement proceedings
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Cases: Mediation ExampIe (part 2)
• Parties submitted to WIPO Mediation
• Parties worked with WIPO-appointed mediator
Australian mediator
Understanding of subject matter
International experience
• Parties agreed license and new consulting contracts
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Cases: Arbitration Example (part 1)• Asian inventor granted exclusive license
over a European patent and five US patents to US manufacturer
• Clause provided that disputes whether royalties had to be paid in respect of products manufactured by US party be resolved through WIPO Expedited Arbitration
• US party rejected claim that its products embodies technologies covered by the licensed patents and refused to pay royalties
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Cases: Arbitration Example (part 2)• Inventor initiated WIPO case• Center appointed sole arbitrator under
WIPO Expedited Arbitration Rules• Arbitrator had to consider whether
products infringed the ‘claims’ asserted for each of the patents and whether patents had been ‘anticipated’ by ‘prior art’
Highly complex legal and technical issuesBusiness secrets, models, site visitsEight days hearingFinal award in 15 months
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
(IP) ADR Trends• Arbitration
Containing complexity, time, cost of process• Mediation
Increasing roleMediator trainingParty preparation
• GeneralCourt-mandated ADRIP Office-offered ADRDispute resolution as business decision
Company policyPledgesClient expectations
Use of information technology
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Electronic Case Facility• Web-based custom-created application
For WIPO arbitration and mediation casesBy party agreement in consultation with neutral(s)Customized version of WIPO ECAF created for and used by America’s Cup arbitration
• Principal functionsElectronic case file
Filing, storage, search, retrievalEmail alerts to all participants for each new filing Message Board for communication outside case file
Case management informationTime tracking, case overview, finance, contact details
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO ECAF Security
• AuthenticationECAF usernameECAF passwordRSA SecurID password
Changing passcode generated by RSA SecurID (Valid only for 60 seconds)
• EncryptionSSL (Secure Socket Layer) system
• Firewall protection
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Erik Wilbers (WIPO) – Session XII – AIPPI Forum – Singapore – October 6, 2007
WIPO Center Information• Website: http://www.wipo.int/amc
WIPO RulesWIPO model clausesWIPO case examples
• ECAF introduction and users manualhttp://www.wipo.int/amc/en/ecaf/index.html
• Contact the WIPO [email protected]
• Publicationshttp://www.wipo.int/center/amc/en/publications/