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WIPO Mediation
Court litigation is often costly
and time-consuming and can
harm business relationships.
Increasingly, parties are
turning to Alternative Dispute
Resolution (ADR) instead.
Guide to WIPO Mediation
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Guide to WIPO Mediation
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Guide to WIPO Mediation
IP dispute resolution
tion
urisdic
Fo reign J
C ou r t —
tion
ome Jurisdic
Co ur t — H
Mediation Arbitration
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Guide to WIPO Mediation
tion
Arbitra
n
bitratio
x p e dited Ar etermination
E D
Exper t ediation
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Guide to WIPO Mediation
What is mediation?
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Guide to WIPO Mediation
Party Agreement
WIPO Contract
Clause/ Submission
Agreement
First step
(Negotiation)
Procedure
WIPO Mediation
WIPO
Court WIPO WIPO Expert
Expedited
Litigation Arbitration Determination
Arbitration
Outcome
Settlement
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Guide to WIPO Mediation
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Guide to WIPO Mediation
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Guide to WIPO Mediation
Unilateral request
IP Office proceedings Court proceedings (non-contractual)
Parties agreed to submit After more than one year Chinese company filed
all trademark oppositions of court proceedings, Request for WIPO Mediation
into consolidated WIPO parties accepted judge’s in accordance with Article 4
Mediation, in order to resolve suggestion to submit of WIPO Mediation Rules
all outstanding proceedings dispute to mediation and
on global basis filed joint request for WIPO
Mediation
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Guide to WIPO Mediation
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Guide to WIPO Mediation
In most WIPO cases one or both parties The unilateral request may be
request mediation on the basis of a especially helpful in infringement
clause in their contract. Where a disputes or in cases pending before
contract does not include such a clause the courts.
or the parties do not have a contract
between them, they may request The following model unilateral
mediation through a submission Request for WIPO Mediation with filing
agreement. Another WIPO option is guidelines can be found at wipo.int/
for one party to unilaterally request amc/en/mediation/filing
mediation.
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Guide to WIPO Mediation
When parties agree to submit a dispute The principal aim of the WIPO Center
to WIPO Mediation, they adopt the is to help parties achieve rapid and
WIPO Mediation Rules as part of such cost-effective resolution of their IP
agreement. While the mediator and disputes. To this end, the WIPO Center
the parties together determine their actively:
interaction in the mediation process, • helps the parties submit disputes
those Rules provide a procedural to WIPO ADR procedures;
framework which allows the mediator • assists in the parties’ choice
and the parties to concentrate on of specialized arbitrators,
resolving the dispute. mediators and experts – from the
WIPO Center’s international list or
The WIPO Mediation Rules have the elsewhere;
following main functions: • sets the neutrals’ fees, in close
• They establish the non-binding consultation with the parties and
nature of the procedure (Articles the neutrals, and administers
14(a) and 19(iii)). the financial aspects of the
• They define the way in which proceedings;
the mediator will be appointed • liaises with the parties and the
(Article 7). neutrals throughout the case to
• They set out how the mediator’s ensure optimal communication and
fees will be determined (Article 23). procedural efficiency; and
• They guide the parties how to • arranges for desired support
begin the mediation and set out services, including meeting
the process (Articles 3 to 6 and 13). facilities.
• They provide the parties with
assurances that the process,
disclosures made during it, and any
outcome will remain confidential
(Articles 15 to 18).
• They determine how the costs of
the procedure will be shared by
the parties (Article 25).
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Guide to WIPO Mediation
z ICT 25%
Mobile Apps, Outsourcing,
Systems Integration, Software
Development, Software
Licensing, Telecommunications
z Commercial 21%
Distribution, Energy, Franchising,
Marketing, Sports
z Patents 28%
Cross-licensing, Infringements,
Licenses, Ownership, Patent
Pools, R&D / Tech Transfer,
Royalty Payment
z Trademarks 17%
Coexistence, Infringements,
Licenses, Oppositions,
Revocations
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Guide to WIPO Mediation
Parties do not
Appointment of Parties conclude
conclude Mediation
the Mediator Mediation Agreement
Agreement
Conclusion of Termination of
the Mediation the Mediation
Settlement
Agreement
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Guide to WIPO Mediation
How it works:
The principal steps in a WIPO Mediation
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Guide to WIPO Mediation
The Request for Mediation with A key step in the process is the
which the case is started should set selection and appointment of the
out summary details concerning the mediator.
dispute, including the names and
communication details of the parties Following receipt of the Request for
and their representatives, a copy of Mediation, the WIPO Center will contact
an agreement to mediate and a brief the parties or their representatives
description of the dispute. These to commence discussions on the
details are not intended to perform the appointment of the mediator. Unless
legal function of defining arguments the parties have previously agreed on a
and issues; they simply give sufficient mediator, the WIPO Center will assist
information for the mediation to them using the so-called list procedure,
proceed. which involves the following steps:
• Based on a number of factors
such as subject matter, location
and nationality of the parties, and
language needs, the WIPO Center
sends a shortlist of potential
The mediator candidates to each party, with
detailed profiles setting out their
must enjoy the qualifications.
• If the parties cannot agree on a
confidence of mediator together, each party may
rank the candidates in the order
both parties, and of preference.
• After confirming impartiality and
so it is crucial that independence with the mediator,
the WIPO Center makes the
both parties fully appointment taking into account
the preferences expressed by the
concur with the parties.
appointment.
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Guide to WIPO Mediation
Amount
in dispute Administration fee Mediator’s fees
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Case study
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Guide to WIPO Mediation
Caucuses Over the two days, the mediator holds several caucuses
separately with each party including its counsel. The
caucus sessions serve to canvass each party’s alternatives
to settlement, the relative strengths and weaknesses of their
legal positions, their core interests that would need to be met
by any agreement, and possible options for settlement. The
mediator does not provide his own evaluation of the parties’
interests and legal positions: instead, he questions both
parties’ lawyers in the presence of their clients and brings the
parties to a fuller appreciation of the cost and uncertainty
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Time and cost This high-value result was achieved in a mediation engaging
the parties intermittently over a few months and costing a
fraction of court litigation.
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Guide to WIPO Mediation
The WIPO Center regularly provides Parties should contact the WIPO Center
procedural guidance to parties in with any queries on such Good Offices
order to facilitate direct settlement assistance at arbiter.mail@wipo.int or by
between them or submission of an calling +41 22 338 8247.
existing dispute to WIPO ADR.
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Guide to WIPO Mediation
Mediation Arbitration
Parties Either party may unilaterally Once the parties have validly
withdraw from the procedure. agreed to submit a dispute to
arbitration, neither party may
unilaterally withdraw from the
procedure.
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For more information contact