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Dispute resolution under WPO

The World Intellectual Property Organisation (WIPO) is an autonomous, intergovernmental organisation established by the Convention Establishing the World Intellectual Property Organisation which entered into force in 1970. The origins of WIPO are traceable back to 1883 when the Paris Convention for the Protection of Industrial Property was adopted and to 1886 when the Berne Convention for the Protection of Literary and Artistic Works was adopted. WIPO is part of the United Nations’ system of organisations and has its headquarters in Geneva, Switzerland. It comprises 179 member states and is headed by a director general. It has a secretariat called the International Bureau. Its main objective is to promote the protection of intellectual property (IP) all over the globe through cooperation among states.

JACOB MUTEVEDZI

One of WIPO’s central functions is the provision of a platform for the settlement of IP disputes. In 1994, the WIPO Arbitration and Mediation Centre (“the Centre”) was established as a neutral, independent and non-profit dispute resolution institution. The Centre is in Geneva, Switzerland and has another office in Singapore. It is the sole international provider of specialised alternative dispute resolution services for intellectual property disputes and the leading institution in the administration of internet domain name disputes. The nature of matters brought for resolution at the Centre includes contractual disputes, for example patent and software licences, trademark coexistence agreements, distribution agreements for pharmaceutical products and research and development agreements. The caseload also includes non-contractual disputes like patent infringements.

The Centre facilitates dispute resolution by mediation, arbitration, expedited arbitration and expert determination procedures in terms of the WIPO rules. These procedures are developed by pre-eminent experts in alternative dispute resolution (ADR) and are broadly accepted as especially suitable for technology, entertainment and other disputes concerning intellectual property. Moreover, the Centre also works together with Intellectual Property Offices (IPOs), national courts and other IP and ADR stakeholders to promote the use of ADR to settle IP and technology disputes. It has also developed bespoke dispute resolution procedures for specific industries.

The Centre administers disputes through the following mechanisms:

Mediation: a non-binding procedure in which a neutral person, the mediator, helps the parties to a dispute to reach a mutually satisfactory settlement.

Arbitration: a procedure in which the dispute is submitted to a single arbitrator or to a panel of arbitrators who issue an “Award” which is binding on the parties.

Expedited arbitration: a species of arbitration conducted and finalized in a particularly short time and at reduced cost.

Mediation followed, in the absence of settlement, by arbitration: a procedure which integrates mediation and arbitration. It starts with mediation and if mediation fails the parties resort to arbitration.

These procedures are open to any person or entity, notwithstanding their nationality or domicile. Proceedings are conducted in terms of Rules established by the International Bureau which are, for the most part, compatible with any legal system in the world. Proceedings may be conducted anywhere in the world.

The ADR mechanisms administered by the Center offer a broad array of advantages. For instance, they save time and costs. Litigation can be both protracted and expensive. In certain instances, certain IP rights of limited duration may actually expire before litigation is finalised. Further, parties have the latitude to customise their dispute resolution process. For instance they can choose the applicable law, procedure, and language of the proceedings. Moreover, the mechanisms offer neutrality in relation to the law, language and institutional culture of the parties. Jurisdictional neutrality gives ADR procedures a significant advantage over litigation in cross-border IP disputes.

IP disputes frequently involve very technical matters and sophisticated legal issues, however, not every country has specialized intellectual property courts or judges. Under ADR procedures, parties can ensure that neutral persons with specialised expertise on the subject matter of the dispute are appointed as mediators or arbitrators. Oftentimes parties worry about confidentiality in litigation because court records are accessible to the public. Sensitive information like trade secrets and other proprietary information is divulged during discovery thus potentially ruining a party’s business prospects. Under WIPO procedures parties can regulate issues of confidentiality through agreements and protective orders issued by tribunals.

Litigation involving IP disputes often spans multiple jurisdictions and parties have no option but to institute separate proceedings in various jurisdictions to enforce IP rights. The Centre facilitates dispute resolution by way of a “single process” as opposed to a multiplicity of court actions in different jurisdictions. In the case of arbitration, a single process produces an award that is final and enforceable internationally. More importantly, parties have at their disposal rules which cater for the specific characteristics of intellectual property disputes.

Referral of disputes to a procedure administered by the Centre is done in two ways. Firstly, through a dispute resolution clause in a contract providing for the referral of all disputes under that contract to the Centre. Secondly, it can be achieved by a submission agreement providing for the reference of an existing dispute. The Centre also provides a Submission Advisory Service in terms of which it can convene, on request by the parties, a meeting for the purpose of discussing the prospect of submitting a dispute to a procedure facilitated by the Centre.

The Centre maintains a list of mediators and arbitrators and comprehensive details of their qualifications, experience and areas of expertise. Parties must pay administration fees to the Centre and must also settle the mediator or arbitrator’s fees in accordance with a Schedule of Fees accessible at the Centre. Both categories of fees are computed on the basis of the amount in dispute.

In the discharge of its functions, the Centre is supervised by two bodies, namely, the WIPO Arbitration Council which renders advice on matters of policy and planning; and the WIPO Arbitration Consultative Commission which gives advice and renders opinions on non-routine issues in respect of which the Centre is enjoined to make a decision in the course of the administration of an arbitration, for instance, the challenge of an arbitrator.

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