Alternate Dispute Resolution For IP Gains Momentum, Panellists Say At WIPO

Protecting an invention or a creation with intellectual property rights is only truly effective if inventors and creators can enforce those rights. Small and medium sized enterprises find it difficult and costly to go to court to sue potential infringers of their IP rights, and most time, just renounce, according to speakers at a panel on the side of the World Intellectual Property Organization General Assemblies last week. A much cheaper and quicker route than going to court is to seek dispute resolution through a dedicated service, the panellists said.

A number of countries are collaborating with WIPO Alternative Dispute Resolution system to promote this alternative way to solve IP-related conflicts. Country delegates at the side event said awareness of the service, although rising, still needs to grow.

On the margin of the 58th WIPO General Assemblies taking place from 24 September to 2 October a side event gathered several countries collaborating with WIPO on the Alternative Dispute Resolution (ADR) system.

The WIPO Arbitration and Mediation Center “enables private parties to efficiently settle their domestic or cross-border IP and technology disputes out of court,” according to the website. The centre has published the second edition of the WIPO Guide on Alternative Dispute Resolution Options for Intellectual Property Offices and Courts [pdf]. The guide was financially supported by the South Korean Intellectual Property Office (KIPO).

According to the guide, “the ADR ‘boom’ in the 1970s and 1980s was spurred in large part by a rising dissatisfaction with litigation.” It added: “Aside from being exorbitant, time-consuming and acrimonious, it was evident that litigation could also be an enormous gamble.”

The use of ADR for IP disputes dates back to the 19th century, according to the guide. As of 2018, over 560 cases have been administered by the WIPO, it says.

WIPO Collaborates with Country IP Offices

A number of countries are collaborating with WIPO, including Argentina, Australia, Brazil, China, Indonesia, Kenya, Russia, Singapore, Spain, and Switzerland.

Miguel Àngel Margáin, director general of Mexican Institute of Industrial Property (IMPI), said the IP office cooperation with WIPO started in 2014. The IP office promotes ADR to national associations of corporate lawyers, and the main chambers of commerce of Mexico. Activities with WIPO aim to train IMPI officials and private lawyers, Margáin said, adding that IMPI hosts a litigation service, which is not the case for most national IP offices.

Among cases that can be solved through ADR, Margáin cited patent infringement, royalties non-payment, misuse of trademarks, bad faith on the use of business models, and unauthorised streaming reproduction.

Frances Roden, deputy director general, IP Rights Division at the Australian IP office, said the office does not do enforcement but can help customers enforce their rights. The IP Australia Mediation referral service was launched on 10 July 2017, as a pilot for two years, she said, with options to extend that period.

This service seeks to allow small and medium-sized enterprises accessing lower cost and efficient IP-related dispute resolution, said Roden, adding that the office is trying to promote the service and raise awareness through different means including social media and comprehensive communication campaigns.

Greater awareness is important, she said, as users can use ADR instead of going to courts, or choose not to enforce their rights because of high costs.

IP Australia has been collaborating with WIPO since 2016 and since January 2017 has provided an online ADR service, which allows disputing parties and arbitrators the opportunity to work through international disputes without having to travel, she explained.

Josephine Rima-Santiago, director general of the Philippines Intellectual Property Office (IPOPHL) said the office started local mediation in 2011. Effective 5 October, she said, a revised rule on mediation makes mediation mandatory in specific cases including administration complaints for the violation of IP rights and/or unfair competition, technology transfer payments, and disputes on the terms of a licence involving the author’s rights to public performance or other communications of his work.

An MoU was signed with WIPO in May 2014, she said, and a joint dispute resolution procedure to facilitate the mediation of IP disputes is effective since May 2015.

Soo Hyun Myung, director Cultural Trade and Cooperation Division of the South Korea Ministry of Culture, Sports and Tourism, said two public agencies are dealing with ADR for copyright and the content industry in the country.

One of them, the Korea Copyright Commission, was established in 1987, and mediates copyright disputes, she said. Cooperation with WIPO started since 2011, she noted.

Some Countries Provide Financial Incentives

Daren Tang Heng Shim, chief executive of the Intellectual Property Office of Singapore, said Singapore was the first country to bring IP ADR outside of Geneva, back in 2010. In 2011, he said, an MoU was signed with WIPO.

Mediation is a very strong alternative for SMEs, he said, adding there are few cases in Singapore, and ADR needs awareness raising. In Singapore  a 3-year pilot project provides funding (up to US$4,000) for parties to undergo mediation at an ADR institution, Tang said. This funding is linked to some obligations, including parties having a mediator, provide feedback, and information about agent fees, he explained.

He also noted the soon to be signed International commercial mediation: draft convention on international settlement agreements resulting from mediation [pdf]. He said the convention is to be signed in Singapore in August 2019.

Piotr Brzylski of the Polish Patent Office said the office signed an MoU with WIPO in April, which was followed by the establishment of a joint dispute resolution procedure to facilitate the mediation of trademark opposition disputes. In the near future, Brzylski said the office plans to extend the mediation to all IP rights.

Parties going through ADR benefit from the reimbursement of 50 percent of trademark opposition fees when settlement has been reached, he said.

Pedro Cartagena Abella, senior adviser at the Spanish Patent and Trademark Office, said the office offers model contracts for technology transfer. In particular, a working group coordinated by the IP office has produced four models: non-disclosure agreement; material transfer agreement; patent/utility model licence agreement; and research and development agreement.

Those models are accessible free of charge from the IP office website, he said.

 

Image Credits: Catherine Saez