(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
=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 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
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
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 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
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
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
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: [email protected]
PCT Resources/Information
47
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
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 [email protected]
Telephone: + 41 22 338 8686
For questions regarding specific international applications
or international registrations
Madrid Team 1: [email protected]
Madrid Team 2: [email protected] (for Germany)
Madrid Team 3: [email protected]
Telephone: + 41 22 338 750 1/2/3
67
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
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.
87
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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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:
Model clauses:
www.wipo.int/amc/en/clauses/
Info on procedures, neutrals and
case examples:
www.wipo.int/amc/
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