Recent developments in

WIPO administered IP Services

Claus Matthes, WIPOMunich, October 2016

(Patents)

(Trademarks)

(Industrial Designs)

(Arbitration and Mediation)

IP Services Provided by WIPO

2

Composition of Revenue 2014/15

(in millions of Swiss francs)

PCT system fees554.0(73.7%)

Madrid system fees

123.0(16.4%)

Assessed contributions

35.7(4.7%) Voluntary

contributions19.2(2.6%)

Hague system fees7.1

(0.9%)

Other revenue13.1(1.7%)

Total 752.1

Composition of Expenditure 2014/15

(in millions of Swiss francs)

Total 681.9

Personnel expenditure432.7(63.5%)

Contractual services135.7(19.9%)

Operating expenses42.0(6.2%)

Travel and fellowships 32.8(4.8%)

Depreciation and amortization20.1 (2.9%)

Other expenses18.6 (2.7%)

IP Services Provided by WIPO

3

4

=PCT

Albania

Algeria

Angola

Antigua and Barbuda

Armenia

Australia

Austria

Azerbaijan

Bahrain

Barbados

Belarus

Belgium

Belize

Benin

Bosnia and Herzegovina

Botswana

Brazil

Brunei Darussalam

Bulgaria

Burkina Faso

Cambodia (8 Dec. ‘16)

Cameroon

Canada

Central African Republic

Chad

Chile

China

Colombia

Comoros

Congo

Costa Rica

Côte d'Ivoire

Croatia

Cuba

Cyprus

Czech Republic

Democratic People's

Republic of Korea

Denmark

Djibouti (23 Sept. ‘16)

Dominica

Dominican Republic

Ecuador

Egypt

El Salvador

Equatorial Guinea

Estonia

Finland

France,

Gabon

Gambia

Georgia

Germany

Ghana

Greece

Grenada

Guatemala

Guinea

Guinea-Bissau

Honduras

Hungary

Iceland

India

Indonesia

Iran (Islamic Republic of)

Ireland

Israel

Italy

Japan

Kazakhstan

Kenya

Kuwait (9 Sept. ‘16)

Kyrgyzstan

Lao People’s Dem Rep.

Latvia

Lesotho

Liberia

Libyan Arab Jamahiriya

Liechtenstein

Lithuania

Luxembourg

Madagascar

Malawi

Malaysia

Mali

Malta

Mauritania

Mexico

Monaco

Mongolia

Montenegro

Morocco

Mozambique

Namibia

Netherlands

New Zealand

Nicaragua

Niger

Nigeria

Norway

Oman

Panama

Papua New Guinea

Peru

Philippines

Poland

Portugal

Qatar

Republic of Korea

Republic of Moldova

Romania

Rwanda

Russian Federation

Saint Lucia

Saint Vincent and

the Grenadines

San Marino

Sao Tomé e Principe

Saudi Arabia

Senegal

Serbia

Seychelles

Sierra Leone

Singapore

Slovakia

Slovenia

South Africa

Spain

Sri Lanka

Sudan

Swaziland

St. Kitts and Nevis

Sweden

Switzerland

Syrian Arab Republic

Tajikistan

Thailand

The former Yugoslav

Republic of Macedonia

Togo

Trinidad and Tobago

Tunisia

Turkey

Turkmenistan

Uganda

Ukraine

United Arab Emirates

United Kingdom

United Republic of Tanzania

United States of America

Uzbekistan

Viet Nam

Zambia

Zimbabwe

151 PCT States5

UN Member States not yet in PCTAfghanistan

Andorra*

Argentina**

Bahamas

Bangladesh

Bhutan

Bolivia

Burundi

Cape Verde

Democratic Republic of

Congo

Eritrea

Ethiopia

Fiji

Guyana

Haiti

Iraq

Jamaica

Jordan*

Kiribati

Lebanon

Maldives

Marshall Islands

Mauritius

Micronesia

Myanmar

Nauru

Nepal

Pakistan

Palau

Paraguay**

Samoa

Solomon Islands

Somalia

South Sudan

Suriname*

Timor-Leste

Tonga

Tuvalu

Uruguay**

Vanuatu

Venezuela

Yemen

(42)

*preparing to accede **PCT discussions ongoing

6

PCT Applications

PCT filings in 2015 ~218,000 applications

+1.7% in 2015

7

PCT Applications 2015 – Top 10 Countries

0

10,000

20,000

30,000

40,000

50,000

60,000

US JP CN DE KR FR GB NL CH SE IT CA AU IL FI

US: - 6.7%

JP: + 4.4%

CN: + 16.8%

DE: + 0.5%

KR: + 11.5%

FR: + 2.6%

GB: + 0.8%

NL: + 3.6%

CH: +4.4%

SE: - 1.4%

IT: + 0.8%

CA: - 7.2%

AU: + 1.7%

IL: + 7.4%

FI: - 12.1%

8

Distribution of PCT Applicants in 2015

Businesses

Individuals

Universities

Government andResearch Institutions

Top Applicants

Businesses: Huawei Technologies – 3,898 applications published

Universities: University of California – 361 applications published

Government and Research Institutions: Commissariat à l’Energie

Atomique et aux Energies Alternatives – 409 applications published

9

10

Amendments to the PCT Regulations

as from 1 July 2016

PCT Rule Changes (1)

Amendment to PCT Rules 48 and 94

Omission of certain information from publication (Rule 48) or

public file access (Rule 94)

Only upon reasoned request by the applicant to the IB

Information must be omitted from publication/public file access, if

o it does not obviously serve the purpose of informing the

public about the international application,

o publication of or public access to such information would

clearly prejudice the personal or economic interests of any

person, and

o if there is no prevailing public interest to have access to that

information

12

PCT Rule Changes (2)

Amendment to PCT Rule 26bis.3

General Rule: Obligation of the RO to forward to the IB all

documents received from the applicant in relation to a request to

restore the priority right

Exception:

o RO shall not forward information, upon reasoned request by

the applicant or on its own decision, if

it does not obviously serve the purpose of informing the

public about the international application,

publication of or public access to such information would

clearly prejudice the personal or economic interests of

any person, and

if there is no prevailing public interest to have access to

that information

Effective as from 1 July 2016 for applications filed on

or after that date

13

PCT Rule Changes (3)

Amendment to PCT Rule 82quater

Extension of force majeure provisions to time limits missed due

to “general unavailability of electronic communication services”

PCT Assembly Understanding:

o “In adopting the amendments to Rule 82quater.1, the

Assembly noted that the [Offices and Authorities] should, in

considering [such a request], interpret ‘general unavailability

of electronic communications’ to apply to outages that affect

widespread geographical areas or many individuals, as

distinct from localized problems associated with a particular

building or single user.”

Effective as from 1 July 2016 for applications filed on or after that

date, and for applications filed before that date where the “event”

occurred on or after that date

14

PCT Rule Changes (4)

Amendment to PCT Rule 92.2(d)

Expansion of the accepted languages of communication from the

applicant to the International Bureau through ePCT to the

particular language of publication (in addition to English and

French)

Effective as from 1 July 2016 for applications filed on or after that

date, and for applications filed before that date where such

correspondence is received by the IB on or after that date

15

Amendments to the PCT Regulations

as from 1 July 2017

PCT Rule Changes (1)

Amendment to PCT Rules 12bis, 23bis and 41

Transmittal of earlier search and/or classification results by ROs to ISAs

o General Rule: ROs forward the search/classification results from

priority applications without the applicant’s express permission

o Exception:

ROs which have notified the IB (before April 14, 2016) of

incompatibility of such forwarding with applicable national law

are not required to do so

Even in cases in which an RO in principle applies the procedure

above, they may allow applicants to request, at the time of filing

of the PCT application, to not have the earlier search results

forwarded to the ISA, if the RO notified the IB accordingly

(before April 14, 2016)

Effective as from 1 July 2017 for applications filed on or after that date

17

PCT Rule Changes (2)Amendment to PCT Rules 86 and 95

Obligation for designated Offices to timely send national phase

entry and related data to the IB

Data required to be transmitted:

o Date national phase entered

o National application number

o Number and date of national publication

o Date of grant, and number and date of national publication as

granted

Time limit for reporting: 2 months from event (or as soon as

reasonably possible thereafter)

Objective: visibility of the status of PCT application during the

national phase on PATENTSCOPE under the “National phase” tab

Effective as from 1 July 2017 for applications in respect of which

the acts referred to in Article 22 or Article 39 are performed

on or after that date

18

PCT Working Group, May 2016

PCT Working Group 2016

PCT/CTC recommended to PCT Assembly to appoint Turkish Patent

Institute as International Authority

Amendments to PCT Regulations agreed:

modifying time limit to request Supplementary International Search

(from 19 to 22 months)

further small change to Rule 23bis

removal of unnecessary incompatibility provisions

No agreement (yet) on proposals concerning:

same day priority claims

missing/erroneously filed parts

fee reductions proposed by Brazil for universities and public research

organizations

proposed amendments to Schedule of Fees and Rule 92bis to assist

IB in responding to potentially abusive use of PCT fee reductions

20

Continued Areas of PCT focusQuality:

improve the quality and consistency of PCT international phase reports

develop quality metrics for measuring usefulness of international

phase reports

develop quality feedback system for offices (e.g., DO to ISA)

explore collaborative search and examination

improve timeliness of PCT work

Help designated Offices to better understand reports

search strategies, standardized clauses, explanations of relevance of

cited documents, etc.

Improve timeliness of actions in international phase

ISAs/IPEAs, ROs (eSearchCopy)

Improve access to national search and examination reports

PATENTSCOPE, WIPO-CASE, Global Dossier

21

ePCT

22

What is ePCT?

A tool for both applicants and Offices to facilitate

international collaboration and work sharing in the PCT

browser-based services for applicants

browser-based services for Offices (RO, IA, DO)

various background machine-to-machine services not

normally seen

23

ePCT for Applicants

ePCT browser-based services for applicants:

requires standard browser – no plugins, always up to date

ePCT-Filing to 43 ROs (and counting)

Subsequently filed documents (SFD) upload to 40 ROs,

11 IAs (EPO soon)

24

ePCT for Applicants (2)

More than just another e-filing tool

live view of (almost) everything in the IB’s file, including

processing status

not just viewing, an active tool from drafting application to

interactions with RO, IA and IB; enter data used directly for

application management

notifications of events and deadlines, time zone aware

wide range of validations, all based directly on IB data

flexible + secure access sharing with whoever you choose

secure cloud -- easy interface in 10 languages

we listen – many features implemented in response to

customer feedback

25

See More Than the IB

Live view of (almost) everything in the IB’s files and data

includes unpublished applications and documents which

will never be published

Data hosted on behalf of other Offices

Your own draft documents, international applications and

“actions”

A valuable reference for everyone in your Office and

potentially applicants, inventors and agents to be

engaged for the national phase

26

Flexible Access Sharing

You decide

who has access

level of rights

(3 options)

Case by case

or for a group

Set defaults

27

Secure Cloud – 10 Languages

Doesn’t matter where your partners are or what their

preferred language is

28

Choose what notifications you want and how

lists in ePCT

digitally signed email

See new documents immediately

A useful supplement to docketing

Notifications of Events and Deadlines

29

Timezone Aware

RO, ISA and IB may be in different timezones from you

and from each other

Be sure you meet the local deadlines

30

Not Just Viewing – An Active Tool

Share drafts of applications, documents to upload or

“actions”

Leave notes for yourself or colleagues

Get the relevant experts to check and correct “their”

sections

Agent can quickly review, sign and submit

Supports paper-equivalent document upload, but get

better service by sending data

31

Wide Range of Validations

Spot and fix errors before they are submitted

Previews generated

by same system as

used for publication

32

Share Addressbooks

Easier entry

More consistent data

Multilingual support

33

See Processing Status

For documents sent to IB or Offices using ePCT for

processing, icon shows whether yet processed

Other statuses visible – many searchable

34

Send Data Instead of Letters

Most interactions with IB can use an “action” in place of

uploading a letter or form

IB directly imports the data

Faster turn-around; no transcription errors

35

ePCT for Offices

ePCT browser-based services for Offices (RO, IA, DO)

hosted e-filing services

hosted electronic services for any Office (mainly RO)

o many ROs previously operating entirely on paper

o IAs previously all had internal electronic services but

few offered applicant interfaces

Various background machine-to-machine services not

normally seen

Aim at single, consistent view of documents and data for

applicants, RO, IB, ISA, IPEA and DO/EOs

centralized hosted data

36

ePCT for Receiving Offices

Receive e-filings from server hosted by IB

Receive SFDs from applicant through ePCT

Import scanned paper filings and SFDs

add bibliographic data

Prepare forms

send by paper, email or fax in addition to ePCT notifications

Transmit record copy

Indicate fee payments to release eSearchCopy

Transmit data for IB processing (Rule 92bis,

withdrawals...)

37

ePCT for ISAs, IPEAs and DOs

ISA/IPEA

Receive search copies (eSearchCopy)/demands

Receive SFDs from applicant using ePCT

Prepare and send reports and forms

Prepare ISR/WOSA in XML format (live test)

DO

View published applications, including documents not

available on Patentscope (e.g., 3PO cited documents)

Notify national phase entries

See files for notified pre-publication national phase entries

38

Common Views with IB and Applicant

Be sure you’re talking about

the same thing

Offices using ePCT can see

files and data for which they

are competent through the

same screens as the applicant

file view shows documents with numbers also shown to

applicants using ePCT or the IB’s “E-dossier”

39

Key ePCT Developments Since 2015

ePCT-Filing to 32 new ROs since 1 January 2015

Greatly improved validations – spot errors or PDF

conversion problems before documents are submitted

More “actions” to submit data directly – don’t risk the

Office mis-transcribing information!

Multilingual shared address books

Credit card payments (to RO/IB only)

40

Look and Feel

A world class look; easier and more intuitive to use

41

Easier Second Factor Authentication

Current system uses username, password and digital

certificate (supports soft certificate from WIPO or certain

other Offices or EPO smartcard)

good security, but difficult to install and use

o by far the largest reason for calls to PCT e-Services

Helpdesk!

Instead use one-time password generators

free industry standard apps supported

42

Improved Search Information

XML search reports and written opinions now received

from ISA/CN, EP and KR (63% of total)

Opens up features coming soon (for relevant

applications)

click for patent citation copies

up to date family matches

combined information with third party and applicant

observations

online NPL citations where available

machine translation on demand

… Information Disclosure Statements?

43

More Information Sharing

More ROs and ISA/IPEAs to use ePCT or offer

integration into own systems allowing real time services

to applicants

Encourage data entry in machine-readable form by the

originator (applicant or Office) and sharing and direct use

of that data

eliminate transcription errors

reduce processing work required

ensure all Offices working with the same data

some actions may become “self-service” and effectively

instantaneous

44

Integration with Agents’ Systems

Web Services (secure machine interfaces) under

development

initial work with Offices

intend to extend to applicant services for integration with

patent management systems

45

ePCT to Assist National Phase Entry?

Most bibliographic data can

simply be pre-filled from

international phase

IB already maintains

reference data for national

phase as well as

international

Secure international

collaboration without

proprietary software

Development of common IT

approaches may lead to

simplifications?

46

For further information about the PCT, see

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

For general questions about the PCT, contact the PCT

Information Service at:

Telephone: (+41-22) 338 83 38

Facsimile: (+41-22) 338 83 39

E-mail: pct.infoline@wipo.int

PCT Resources/Information

47

48

125 Years of the Madrid System:

Protecting Trademarks Abroad

Slide Text

Bullet Point

Bullet Point

49

97 members* (including EU and OAPI)

covering 113 countries

Members of the Madrid System

*All are party to the Protocol,

the governing treaty,

while 55 are also party

to the Agreement

The Use of the Madrid System in 2015

A total of 49,273 international applications received

At the end of 2015

615,323 international registrations in force

Containing 5,66 millions designations in force

Involving 206,492 holders

51

Top Filing Contracting Parties

Contracting Parties 2013 2014 2015

United States of America 5,893 5,414 8,486

European Union 6,814 6,996 8,131

Germany 4,357 3,883 4,603

France 3,514 3,377 3,718

Switzerland 2,885 2,994 3,128

Japan 1,855 1,729 2,407

China 2,455 1,738 2,231

Australia 1,195 1,246 2,229

Italy 2,118 2,070 2,165

United Kingdom 1,580 1,560 2,068

Top Designated Contracting Parties

Contracting Parties 2013 2014 2015

China 20,275 20,309 24,849

United States of America 17,322 17,268 21,996

European Union 17,598 17,270 21,721

Russian Federation 18,239 16,573 17,436

Japan 13,179 12,814 15,776

Switzerland 13,215 12,759 14,584

Australia 11,675 11,533 14,292

Republic of Korea 10,967 10,402 12,997

India 1,916 8,138 11,391

Mexico 5,095 8,533 10,569

53

Top Filing Countries

Figure A.1.3.2 International applications for the top 20 origins, 2015

Growth rate (%): 2014-15

11.2 3.3 8.8 -7.3 -7.7 -10.3 6.8 24.7 -30.8 -7.3

7,361

6,759

4,143

3,1462,704 2,628

2,1971,951 1,830

1,278

Ma

dri

d a

pp

licatio

ns

United

Sta

tes o

f Am

erica

Germ

any

Franc

e

Switzer

land

United

King

dom

Italy

Japa

n

Austra

lia

China

Nethe

rland

s

Origin

Growth rate (%): 2014-15

-1.7 -10.2 8.2 43.3 -23.5 8.0 4.5 11.9 51.0 30.0

1,260

1,104 1,101

947884

781727

603

435 429Ma

dri

d a

pp

licatio

ns

Spa

in

Turke

y

Austri

a

Repub

lic o

f Kor

ea

Russia

n Fe

dera

tion

Belgium

Sweden

Denm

ark

Singap

ore

Luxe

mbo

urg

Origin

Note: Origin data are based on the country of the applicant’s address.

Source: WIPO Statistics Database, June 2016.

54

Top Applicants

# Name Origin Applications

1 NOVARTIS Switzerland 197

2 LIDL Germany 152

3 L'ORÉAL France 130

4 PHILIPS Netherlands 126

5 RICHTER GEDEON NYRT Hungary 124

6

BOEHRINGER INGELHEIM

PHARMA Germany 90

7 APPLE USA 85

8 DAIMLER Germany 83

9 BIOFARMA France 81

10 GLAXO GROUP United Kingdom 68

55

56

57

Survey on

Usage of the Madrid System in Germany

In 2015, WIPO conducted the first survey on usage of the Madrid

System in major filing countries

Germany was selected as the first country for the survey because of

its historical and ongoing importance in the Madrid System evolution

The survey was made in cooperation with GRUR, BDI, DPMA and

Markenverband

The purpose of the survey was to better understand filing trends and

to identify areas for improvement of the Madrid System

58

Survey Results: User Experience

Main reasons for using the Madrid System

Centralized filing and management of rights

Cost savings

One language for many designated Offices

In some cases the Madrid System was not used because of:

Classification practices

Restrictions resulting from the basic mark

Limitations to the geographic coverage, particularly in Latin

America and Asia

59

Survey Results: Areas for Improvement

Dependency period/basic mark requirements may

require review

Harmonization of classification practice would possibly

be needed

Electronic filing should be expanded and improved

More information should be available online with more

user-friendly online tools

Examination and other WIPO processes should be faster

The geographic coverage of the Madrid System should

be expanded

60

Recent Developments

Algeria’s accession to the Protocol

Madrid operating, for practical purposes, as single-treaty

system

One form needed for international applications (MM2)

Deployment of new IT System (MIRIS)

Publication of Madrid System Pendency Rates at WIPO

61

MIRIS

On March 23, 2016, the International Bureau (IB)

deployed the Madrid International Registrations

Information System (MIRIS) - an IT platform to support

the ongoing operational needs of the Madrid System and

to reinforce online services for users

Disruption of some transactions was encountered during

the transition phase

The MIRIS platform is now fully stabilized

Updates are provided on a regular basis at Madrid

webpage

62

Recent Developments (2)

New or improved E-Services:

Madrid E-Filing (Australia and Benelux) – more Offices

are welcome to join

Madrid Monitor (Beta) – integrates ROMARIN, the WIPO

Gazette, Madrid Alert and Real-time Status

New Madrid Member Profiles Database

E-Forms in test

63

Recent Developments – Legal Framework

Amendments to the Common Regulations

Introduction of division and merger of international

registration

Roadmap to the future of the Madrid System

64

Short-term Future of the System (2-3yrs)Enlarging Membership

ASEAN countries - Brunei Darussalam, Indonesia,

Malaysia and Thailand

Canada

Caribbean countries – Trinidad and Tobago, and Jamaica

African countries – Malawi and South Africa

Latin American countries

Arab Countries

Broad-based review of E-Services and development of

an online Customer Resources Center

65

Keep Updated on the Madrid System

Visit the Madrid Website www.wipon.int/madrid/en

Subscribe to

Madrid Notices,

our regular legal

and news updates

Sign up for

Madrid Highlights,

our quarterly

newsletter

66

Contact Details

For general questions about the Madrid System

Madrid Customer Service intreg.mail@wipo.int

Telephone: + 41 22 338 8686

For questions regarding specific international applications

or international registrations

Madrid Team 1: madrid.team1@wipo.int

Madrid Team 2: madrid.team2@wipo.int (for Germany)

Madrid Team 3: madrid.team3@wipo.int

Telephone: + 41 22 338 750 1/2/3

67

68

Hague Union (2016)

51 Geneva Act (1999) (including EU and OAPI)

14 Hague Act (1960)

65 Contracting Parties

69

Geneva Act (1999)

Recent Accessions Potential accessions

Turkmenistan

(March 16, 2016)

D.P.R. of Korea

(September 13, 2016)

United States of America

(May 13, 2015)

Japan

(May 13, 2015)

Republic of Korea

(July 2014)

China

Russian Federation

Morocco

ASEAN countries

Israel

Belize

Mexico

Madagascar

70

Designating the USA

One design per in a single application

MANDATORY! A claim defining the design

MANDATORY! The oath or declaration of inventorship

for each creator

Three levels of individual designation fee:

default (CHF 733/540) small entity (CHF 367/270) micro entity (CHF 183/135)

71

Designating Japan

one independent and distinct design per a single application

Section «Creator» in application form must be filled in

Indication of the principle design in the international application

Special requirement to reproductions

72

Designating the Republic of Korea

For products belonging to Locarno classes 2, 5, or 19 the level three of the standard designation fee shall apply

Products belonging to Locarno class 32 are not subject to registration under the legislation of the Republic of Korea

(i) for a design of a set of articles: one view of the coordinated whole and corresponding views of each of its components, and

(ii) for a design for typefaces: views of the given characters, a sample sentence, and typical characters;

73

Priority Documents

Republic of Korea

• Priority documents may be attached to the IA at the time of filing.

• When failed to attach the priority documents to the IA, these documentsshall be submitted directly to KIPO through a local agent within threemonths of publication of the IR.

United States of America

Japan• Original priority documents have to be sent directly to the JPO

through a local agent within three months of publication of the IR.

• Original priority documents have to be sent directly to the USPTO atthe latest before “the date the issue fee is paid”.

74

Using the Hague as a

First-filing system

Since an international application for registration of

industrial designs may be a first application under the

Hague System, it may itself also serve as a basis for

claiming priority with regard to a subsequent national or

regional application.

Using the Hague as a first-filing system may help to

bypass the inconvenience of claiming priority, when

designating the USA, Japan and the Republic of Korea

75

Most designated Contracting Parties

in 2015

(international registrations)

* Since May 13, 2015

0%10%20%30%40%50%60%70%80%

2015

2014

76

2015: Origin of Filers of International Applications

(by country of address of the applicant)

18.2%

15.7%

13.3%

9.5%

7.2%

5.1%

4.0%

3.0%

2.7%

2.3%

19.0%Switzerland

Germany

Republic of Korea

France

Italy

United States of America

Netherlands

Japan

United Kingdom

Turkey

Others

77

2015: Origin of Holders of International Registrations

(by country of address of the holder)

19.8%

16.4%

13.5%10.2%

7.5%4.1%

3.7%

2.5%

2.3%

2.3%

17.6%

Switzerland

Germany

Republic of Korea

France

Italy

United States of America

Netherlands

Turkey

Sweden

United Kingdom

Others

78

Latest Developments

New Hague Express Database since January 2015

Global Design Database launched in January 2015

Improvement of E-filing interface

Developments in the legal framework

79

New Features of the

E-Filing Portfolio Manager

Send corrections to irregularities or defects

Receive and download notifications from the IB relating to international applications

Retrieve in real-time current status of IA

80

Hague Express Database

81

Global Design Database

82

E-Filing Portfolio Manager

83

84

Top Ten Priorities in Choice of Dispute

Resolution Clause (WIPO Survey)

WIPO Center Report on International Survey of Dispute Resolution in Technology

Transactions

85

WIPO

Arbitration and Mediation Center

Facilitates the resolution of commercial disputes between private

parties involving IP and technology, through procedures other than

court litigation (alternative dispute resolution: ADR)

Offices in Geneva and Singapore

ADR of IP disputes benefits from a specialized ADR provider

WIPO mediators, arbitrators and experts experienced in IP and

technology - able to deliver informed results efficiently

Competitive WIPO fees

International neutrality

Services include mediation, (expedited) arbitration, expert determination, and domain name dispute resolution

86

WIPO ADR: Mediation, Arbitration,

Expert Determination

Mediation: informal consensual process 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 force of contract. Mediation leaves open available court or agreed arbitration options.

Arbitration: consensual 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’ rights and obligations and enforceable internationally. Arbitration normally forecloses court options.

Expert Determination: consensual 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.

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Why Consider WIPO ADR?

Cost of IP court litigation

Calls for expedient solutions

Internationalization of creation/use of IP

Calls for cross-border solutions; consolidate in one procedure

Technical and specialized nature of IP

Calls for specific expertise of the neutral

Short product and market cycles in IP

Calls for time-efficient procedures

Confidential nature of IP

Calls for private procedures

Collaborative nature of IP creation and commercialization

Calls for mechanisms that preserve relations

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Routes to WIPO ADR

ADR contract clause electing WIPO Rules

WIPO Mediation, and/or

WIPO Arbitration / Expedited Arbitration, and/or

WIPO Expert Determination

Model clauses: www.wipo.int/amc/en/clauses/index.html

o Parties can shape the process via the clause (e.g.,

location, language, law)

ADR submission agreement electing WIPO Rules, e.g., in

existing non-contractual disputes

Unilateral request for WIPO Mediation by one party

Court referrals

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WIPO ADR Options

Expedited

Arbitration

Arbitration

WIPO Contract

Clause/ Submission

Agreement

Expert

Determination

Determination

(Negotiation)

Mediation

AwardSettlement

Party

Agreement

Outcome

Procedure

First Step

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WIPO Model Clause Example: Mediation followed by Expedited Arbitration

"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

non-contractual claims, shall be submitted to mediation in accordance with the

WIPO Mediation Rules. The place of mediation shall be [specify place]. The

language to be used in the mediation shall be [specify language]”

If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation within [60][90] days of the commencement of the mediation, it shall, upon the filing of a Request for Arbitration by either party, be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules. Alternatively, if, before the expiration of the said period of [60][90] days, either party fails to participate or to continue to participate in the mediation, the dispute, controversy or claim shall, upon the filing of a Request for Arbitration by the other party, be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute, controversy or claim referred to arbitration shall be decided in accordance with [specify jurisdiction] law."

www.wipo.int/amc/en/clauses/index.html

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WIPO Center Case Role

Administering cases

Under WIPO Rules, or under special procedures

Active management: containing time and costs

o WIPO ECAF (optional online case management)

Facilitating selection and appointment of mediators,

arbitrators, experts

WIPO list of 1,500+ neutrals

o From numerous countries in all regions

o Specialized in different areas of IP and IT

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WIPO Mediation, Arbitration

and Expert Determination Cases

IP/IT disputes and commercial disputes

Contractual: patent licenses, software/ICT, R&D and

technology transfer agreements, patent pools, distribution

agreements, joint ventures, copyright collecting societies,

trademark coexistence agreements, settlement

agreements

Non-contractual: infringement of IP rights

Domestic and international disputes (25/75%)

Amounts in dispute from USD 50,000 to USD 1 billion

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Dispute Areas in

WIPO Mediation and Arbitration Cases

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Recent Developments

Unilateral Request for WIPO Mediation

In the absence of a mediation agreement, a party that wishes to

propose submitting a dispute to mediation may submit a Request

for Mediation to the Center

o Art. 4 WIPO Mediation Rules (effective January 1, 2016)

WIPO Clause Generator

allows parties to develop tailored WIPO clauses and submission

agreements on the basis of the WIPO models

o Select ADR procedure(s) and core elements, such as place

and language of proceedings and applicable law, and, if

desired, additional elements, including qualifications of

neutral

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Further Information

WIPO Arbitration and Mediation Center Offices

Geneva, Switzerland

Singapore, Singapore

Queries and case filing:

arbiter.mail@wipo.int

Model clauses:

www.wipo.int/amc/en/clauses/

Info on procedures, neutrals and

case examples:

www.wipo.int/amc/

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Thank You!

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