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Mediation under the WIPO RulesLeandro ToscanoHead, Business Development UnitWIPO Arbitration and Mediation CenterOscar SuárezLegal Case Manager
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World Intellectual Property Organization (WIPO)
4World Intellectual Property Organization (WIPO)Promotes innovation and creativityFor the economic, social and cultural development of allcountriesThrough a balanced and effective international IP systemWIPO provides IP services that encourage individuals andbusinesses to innovate and createAlternative Dispute Resolution (ADR) services to reducethe impact of disputes on innovation and creativeprocesses
5WIPO Arbitrationand Mediation CenterFacilitates the resolution of commercialdisputes between private parties involvingIP and technology, through proceduresother than court litigation, includingmediation and arbitrationOffices in Geneva and SingaporeUsers around the worldADR provider specialized in IP disputesWIPO mediators, arbitrators andexperts experienced in IP andtechnology - able to deliver informedresults efficientlyInternational neutrality
6What is Mediation?Informal consensual processNeutral intermediary – mediatorassists parties in reachingsettlement of their disputebased on parties’ respectiveinterestscannot impose a decisionSettlement agreement has forceof a contractLeaves open court or arbitrationoptions
7Mediation DevelopmentsGrowing acceptance; increased number of casesCorporate dispute policies and pledgesUse of multi-tiered dispute resolution clause(e.g., mediation arbitration, mediation court litigation)Use of technology (e.g., videoconferencing facilities, online caseadministration – WIPO eADR)International and national legislative efforts on mediationMediation incentives, promotion schemes
8Typical Steps in aWIPO MediationProcess is conducted as agreed bythe parties and the mediatorCommencementAppointment of mediatorFirst and subsequent meetingsConclusion
9WIPO Mediation RulesApplicable to all commercial disputesIP-specific elementse.g., confidentialityFlexibilityPre-structure entire proceedingCan be modified by arrangementbetween mediator and partiesFor domestic and international disputes70% settlement rate in WIPO mediations
WIPO Mediation Rules(Effective from January 1, 2020)Abbreviated ExpressionsScope of Application of RulesCommencement of the MediationAppointment of the MediatorRepresentation of Parties and Participation in MeetingsConduct of the MediationRole of the MediatorConfidentialityTermination of the MediationAdministration FeeFees of the MediatorDepositsCostsExclusion of LiabilityWaiver of DefamationSuspension of Running of Limitation Period under theStatute of Limitations10
11Abbreviated ExpressionsArticle 1 - Mediation AgreementAn agreement by the parties to submit to mediation all or certaindisputes which have arisen or which may arise between themMediation clause in a contract or submission agreementScope of Application of RulesArticle 2Rules deemed to form part of the Mediation Agreement
12Clause example for your contract:WIPO MediationAny dispute, controversy or claim arising under, out of or relating to this contract and any subsequentamendments 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 inaccordance with the WIPO Mediation Rules. The place of mediation shall be [specify place]. Thelanguage to be used in the mediation shall be [specify amc/en/clauses/mediation
13Commencement of the MediationArticle 3 – Mediation Agreement (e.g., clause in a contract orjoint submission agreement)Submit Request for Mediation to WIPO Center and to otherparty(ies)Request for Mediation shall containInformation on parties and contact detailsMediation agreementBrief description of disputeRequest for MediationWIPO IP Portal: www.wipo.int/amc-forms/adr/mediationDownload form: www.wipo.int/amc/en/clauses/mediation
14Request for WIPO Mediation(Article 3, WIPO Mediation Rules)
15Case Examples: Mediation ClauseA software developer based in the United States licensed softwareapplications to a European provider of telecommunications services. Theagreement included a clause submitting disputes to WIPO Mediation.A North American manufacturer of automotive components concluded apatent license with a European company. This agreement contained adispute resolution clause referring to WIPO Mediation to be followed, in theabsence of settlement, by WIPO Arbitration.The DESCA 2020 (Development of a Simplified Consortium Agreement)Model Consortium Agreement for the European Union research fundingprogram Horizon 2020 recommends WIPO Mediation followed, in theabsence of a settlement, by WIPO Expedited Arbitration or court litigation.
16Case Examples: Mediation Submission AgreementA North American company agreed with two Italian companies andone Spanish company to refer to mediation a dispute related toconfusion and misappropriation of their similar trademarks and toregulate future use of their marks.Two European production companies agreed to use WIPO Mediationto resolve a dispute related to the alleged copy of a TV format show.A European entity filed an action in a district court in the UnitedStates for breach of a contract related to R&D in the life sciencessector. After more than one year of court proceedings, the partiesaccepted the suggestion of the judge to submit their dispute tomediation and filed a joint request with the WIPO Center.
17Commencement of the MediationArticle 4 – Unilateral Request for MediationIn the absence of a Mediation AgreementAny party that wishes to propose submitting a dispute tomediationSubmit a Request for Mediation to the WIPO Center and to theother partyWIPO Center may assist partiesRequest for MediationWIPO IP Portal: nload form: www.wipo.int/amc/en/clauses/mediation
18Unilateral Request for WIPO Mediation(Article 4, WIPO Mediation Rules)
19Case Examples: Unilateral Request for MediationIn a dispute involving manufacturing companies based in Asia andNorth America, there were allegations that a product manufactured bythe North American company infringed the Asian company’s patents.As the parties did not have a contractual relationship, the Asiancompany submitted a unilateral Request for WIPO Mediation. Theparties started negotiations and the North American company agreedto stop selling the product in certain territories.Two Asian companies agreed to refer a trademark opposition disputeto WIPO Mediation after one of the companies filed a unilateralRequest for WIPO Mediation inviting the other party to considermediation for their dispute.
20External NeutralArticle 4(b)Upon request by a partyWIPO Center may appoint an external neutral to assist theparties in considering a Request for MediationMay act as mediator provided that all parties agree
21Date of CommencementArticle 5Date on which the Request for Mediation is received by theWIPO CenterArticle 6Acknowledgement of receipt by the WIPO Center
22Appointment of the MediatorArticle 7Party agreementIf no there is no agreement between the parties, list procedureWIPO Center sends a list of candidates to the partiesWIPO List of NeutralsParties provide ranking of candidates (within 7 days)Can also remove names from the listWIPO Center is authorized to appoint a mediator if there is noacceptable candidate for the partiesMediator has to make sufficient available time to enable the mediationto be conducted expeditiouslyArticle 8Mediator neutral, impartial and independent
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24Case Examples: Appointment of the MediatorA European research institute and a French company involved in a disputeover a contract related to a technology in the area of building materialsrequested the WIPO Center to provide them with a list of mediatorcandidates experienced in drafting licensing agreements and specialized inpatent law.A Dutch company concluded a copyright license with a French companyregarding the publication of a technical publication. When the licensorrequested the mediation procedure in light of a dispute between theparties, after consultation with the parties, the WIPO Center appointed acopyright specialist as the mediator.A software developer based in the United States and a European providerof telecommunications services were involved in a dispute over thelicensing of software applications. Taking into account the criteria identifiedby the parties, the WIPO Center proposed as mediator several candidateswith experience in the area of software licensing.
25Representation of Partiesand Participation in MeetingsArticle 9Parties may be represented or assisted in their meetings with themediatorNormally, represented by legal counsel
26Conduct of the MediationArticle 10Party agreement. If there is no agreement, the mediator determines how to conductmediation, in accordance with the RulesArticle 11 – Good faith cooperationArticle 12 – CaucusMediator can meet or communicate with the parties separatelyInformation given at such meetings and in such communications shall not bedisclosed to the other party without express authorizationArticle 13 – TimetableIn consultation with the parties, the mediator will establish the timetable forsubmission of party statementsAny party may at any time submit confidential information to the mediatorMediator shall not, without written authorization of that party, disclose suchinformation to other party
27Case Examples: Conduct of the MediationIn an IP licensing dispute between two European companies, the WIPOmediator conducted a preparatory telephone conference with the partiesincluding an explanation of mediation principles, the submission ofdocuments as well as details of the mediation meeting, such as thetimetable, venue and party representation.An Asian and a United States-based start-up companies were involved in adispute related to a license agreement on the use of mobile phoneapplications. The mediation sessions took place entirely through telephoneconversations, either caucus telephone conversations or calls involvingboth parties.In a trademark dispute referred to WIPO Mediation, two Asian companiesagreed with the mediator to conduct the mediation using videoconferencingtools.
28Case Examples: CaucusA dispute arose between a technology consulting company holding patentson three continents and a major manufacturer regarding the allegedinfringement of such patents. In the course of the mediation, the mediatorheld several caucuses separately with each party including its counsel. Thecaucus sessions served to canvass each party’s alternatives to settlement,the relative strengths and weaknesses of their legal positions, their coreinterests that would need to be met by any agreement, and possibleoptions for settlement.A Singaporean construction company and three entities based inSingapore, Malaysia and Indonesia agreed to refer long pending crossborder commercial and IP disputes to WIPO Mediation. During themediation, the mediator held meetings with all parties and private meetingswith each party. The parties settled their disputes after a one-daymediation session.
29Role of the MediatorArticle 14Promote settlement in any manner that s/he believes to beappropriateNo authority to impose a settlementIf the mediator believes that the dispute many not besusceptible to resolution through mediation, the mediatormay propose:expert determinationarbitrationthe submission of last offers of settlement by each party
30Case Example: Role of the MediatorIn a WIPO mediation related to a life sciences dispute, as a directconsequence of the facilitative role played by the mediator in thecourse of the case, the parties settled their dispute six months afterthe commencement of the mediation.
31ConfidentialityArticle 15No recording of any kind during meetingsArticle 16Each person involved in the mediation (mediator, parties, representativesand advisors, independent experts, any other persons present duringmeetings)Respects confidentialityDo not use or disclose to any outside party any information, unlessotherwise agreed by the partiesSigns a confidentiality undertaking prior to taking part in mediationArticle 17Return documents or other materials supplied by a partyAny notes shall be destroyed
32ConfidentialityArticle 18Unless otherwise agreed by the parties, the mediator and the parties shall notintroduce as evidence or in any manner whatsoever in any judicial or arbitrationproceedingany views expressed or suggestions made by a party with respect topossible settlementany admissions made by a partyany proposals made or views expressed by the mediatorthe fact that a party had or had not indicated willingness to accept anyproposal for settlementany settlement agreement between the partiesExcept to the extent necessary in connection with an action for enforcement ofsuch agreement or as otherwise required by lawUnited Nations Convention on International Settlement AgreementsResulting from Mediation (Singapore Convention on Mediation)Applies to international mediation settlement agreementsWill enter into force on September 12, 2020
33Termination of the MediationArticle 19Settlement agreementDecision of mediatorWritten declaration of a party at any timeArticle 20Mediator shall inform the WIPO Center about the result of the mediationThe WIPO Center shall keep notice confidentialExcept, if necessary, in connection with an enforcement action of the settlementagreement or as required by lawArticle 21Mediator may act as arbitrator in future proceedings if authorized by the parties
34Case Examples: Settlement / TerminationA European airline and a United States software company wereinvolved in a dispute concerning the development of a worldwideplatform for the management of ticket sales. The result of themediation under the WIPO Rules was a new license between theparties.A publishing house entered into a contract with a software companyfor the development of a new web presence. While the parties did notreach a settlement, the mediation enabled them to focus the issuesthat were addressed in the ensuing expedited arbitration proceeding.
35WIPO Administration FeeArticle 22Schedule of feesNon-refundable Administration Fee25% discount for PCT, Madrid and Hague users; WIPO Green technology providersor seekersFees of the MediatorArticle 23Fixed by the WIPO Center in consultation with the mediator and the partiesTaking into account the amount in dispute, complexity and any other relevantcircumstancesUsually, hourly rate; flexibleFee calculator: www.wipo.int/amc/en/calculator/adr.jsp
36DepositsArticle 24The WIPO Center requires each party to deposit equal amounts as advance for thecosts of mediationSupplementary depositsAfter termination of mediation, the WIPO Center renders a final accounting andreturns any unexpended balanceCostsArticle 25Unless the parties agree otherwise, the administration fee, the mediator’s fees andall other expenses are borne in equal shares by the parties
37Exclusion of LiabilityArticle 26Mediator and WIPO are not liable to any party for any act or omission in connectionwith any mediation conducted under these RulesExcept in respect of deliberate wrongdoingWaiver of DefamationArticle 27The parties and, by accepting appointment, the mediator agree thatany statements or comments made or used by parties or mediator or theirrepresentativesin preparation for or in the course of mediationcannot be relied upon to found or maintain any action for defamation, libel,slander or any related complaint
38Suspension of Running of Limitation Periodunder the Statute of LimitationsArticle 28To the extent permitted by the applicable lawFrom the date of commencement until the date of termination
39Case Example: Suspension of Running ofLimitation Period under the Statute of LimitationsA Chinese exporting company and a Singaporean distributor ofconsumer products requested to suspend a trademark invalidationprocedure pending before the Intellectual Property Office ofSingapore to refer the dispute to WIPO Mediation.
40More on WIPO MediationGuide to WIPO Mediationwww.wipo.int/edocs/pubdocs/en/wipo pub 449 2018.pdfWIPO Mediation Ruleswww.wipo.int/amc/en/mediation/rulesWIPO Mediation case .htmlGeneral information on mediationwww.wipo.int/amc/en/mediation
41400 signatories from90 countriesJoin the Pledge!www.wipo.int/amc/en/mediation/join.html
42Contact usQueries: arbiter.mail@wipo.intFurther information: www.wipo.int/amcWIPO Center LinkedInWIPO Center NewsletterWIPO Center WebinarsWIPO Arbitration and Mediation Center OfficesGeneva, SwitzerlandSingapore, SingaporeWIPO External OfficesAlgiers, AlgeriaRio de Janeiro, BrazilBeijing, ChinaTokyo, JapanAbuja, NigeriaMoscow, RussiaSingapore, Singapore
A software developer based in the United States and a European provider of telecommunications services were involved in a dispute over the licensing of software applications. Taking into account the criteria identified by the parties, the WIPO Center proposed as mediator several candidates with experience in the area of software licensing.
