The WIPO Arbitration and Mediation Center Singapore Office – Recent Developments
The WIPO Arbitration and Mediation Center
The WIPO Arbitration and Mediation Center (WIPO Center)1https://www.wipo.int/amc/en/. was established in 1994 as an independent and impartial body which forms part of the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations with 193 Member States, dedicated to developing a balanced and accessible international intellectual property (IP) system. The WIPO Center is based in Geneva, Switzerland, and since January 2010 it has an office in Singapore.
The WIPO Center’s role is to facilitate the time and cost-effective resolution of commercial IP and technology disputes through alternative dispute resolution (ADR) mechanisms, such as mediation, arbitration, expedited arbitration and expert determination. Developed by leading experts in cross-border dispute settlement, the procedures offered by the WIPO Center are recognized as particularly appropriate for international IP and technology disputes.
The WIPO Center is also the leading global provider of mechanisms to resolve Internet domain name disputes, without the need for court litigation. This service includes the WIPO-initiated Uniform Domain Name Dispute Resolution Policy, under which the WIPO Center has processed nearly 48,000 cases related to the abusive registration and use of Internet domain names.2https://www.wipo.int/amc/en/domains/.
WIPO ADR Cases
The WIPO Center has administered over 650 mediation, arbitration, expedited arbitration, and expert determination cases3https://www.wipo.int/amc/en/center/caseload.html.. The majority of these proceedings was filed in the last five years. WIPO ADR cases cover a wide range of IP and technology-related matters, such as patents, know-how and software licenses, franchising and distribution agreements, research and development (R&D) agreements, technology transfers, joint venture agreements, trademark licenses and co-existence agreements, format and TV distribution rights.
The WIPO Center’s ADR services have been used by multinational corporations, small and medium-sized enterprises, R&D centers, universities and inventors from more than 60 jurisdictions around the world. Amounts in dispute in WIPO cases have varied from USD 15,000 to 1 billion.
WIPO ADR procedures seek to create positive opportunities for party settlement. Seventy per cent of WIPO mediation cases settle within just a few months; even for arbitration, 33 per cent of WIPO cases settle before any arbitral award is issued.
The Role of the WIPO Center
In its role as administering institution,4https://www.wipo.int/amc/en/center/role.html. the WIPO Center maintains strict neutrality and independence and administers mediation, arbitration, expedited arbitration and expert determination cases under the WIPO Rules,5https://www.wipo.int/amc/en/rules/. which were last updated in 2020 to reflect a number of developments in global mediation and arbitration practice.6Effective January 1, 2020, the updated WIPO Mediation Rules facilitate, for example, party production of settlement agreements as may be required for enforcement purposes under the recently concluded United Nations Convention on International Settlement Agreements Resulting from Mediation. The WIPO Rules feature certain IP specific provisions, e.g. on experimental evidence, site visits, agreed primers and models, as well as disclosure of trade secrets and other confidential information.
The WIPO Center advises parties on the types of clauses to resolve future disputes for insertion in a contract and provides procedural guidance to facilitate the submission of an existing dispute to WIPO ADR.7The WIPO Center is available to assist parties through its Good Offices services; this could take the form of facilitating direct settlement between parties, advising parties on WIPO model contract clauses and submission agreements, and assisting the parties in submitting disputes to WIPO ADR, including through the WIPO Unilateral Request for Mediation. Further information on the WIPO Center’s Good Offices is available at https://www.wipo.int/amc/en/goodoffices. In particular, the WIPO Center makes available recommended mediation, arbitration, expedited arbitration and expert determination contract clauses and submission agreements8https://www.wipo.int/amc/en/clauses/index.html. which parties may use as basis for submitting their dispute to the WIPO Center, as well as an online Clause Generator9https://www.wipo.int/amc-apps/clause-generator. that proposes additional elements based on the WIPO Center’s case experience.
Once a case is submitted to the WIPO Center, the WIPO Center engages in active case management by assisting in the selection and appointment of neutrals, facilitating communication between parties and neutrals, enforcing timelines, coordinating finance-related issues, and arranging meeting and other support services, including interpretation or secretarial services. The WIPO Center maintains a database of over 2,000 dispute resolution practitioners and experts covering the legal and technical spectrum of IP globally and available to act as mediators, arbitrators and experts.10The members of the WIPO List of Neutrals range from highly specialized practitioners and experts with knowledge in the areas of patents, trademarks, copyright, designs or other form of IP that is the subject of the dispute, to seasoned commercial dispute resolution generalists. The WIPO Center also maintains specific lists of neutrals for specific types of disputes, for example for FRAND disputes. The WIPO Center also makes available online case administration options, including an online docket – WIPO eADR11WIPO eADR allows parties, mediators and arbitrators in a WIPO case to securely submit communications electronically into an online docket. All case information filed in WIPO eADR is protected and encrypted to ensure confidentiality. For more information see https://www.wipo.int/amc/en/eadr/wipoeadr/. – and videoconferencing facilities.12When parties and neutrals in WIPO cases are based in different locations, they have occasionally agreed to hold meetings or hearings remotely via online tools, including videoconferencing facilities, or telephone. While these tools have been used occasionally in the past, we observe a growing interest and use by parties, including in a recent WIPO mediation case of trademark opposition proceedings before the Intellectual Property Office of Singapore (IPOS) which was fully conducted online, with a successful outcome.
WIPO Mediation for IPOS Proceedings
In collaboration with IPOS, the WIPO Center offers a mediation option for trademark, geographical indications and industrial designs proceedings pending before IPOS and an expert determination option for patent proceedings pending before IPOS, and administers such mediation and expert determination proceedings.13https://www.wipo.int/amc/en/center/specific-sectors/ipos/mediation/. The WIPO mediation and expert determination options are available at any time before a final decision is issued by IPOS, and IPOS will proactively inform parties about the possibility to submit their dispute to WIPO ADR at an early stage of the proceedings, after parties have filed their pleadings.14https://www.ipos.gov.sg/protecting-your-ideas/hearings-mediation/mediation.
IPOS and the WIPO Center make available forms to facilitate the submission of disputes to WIPO ADR.15https://www.wipo.int/amc/en/docs/ipos_requestformediation.docx. If both parties agree to mediate, they can jointly submit a Request for WIPO Mediation to the WIPO Center and IPOS. If one party wishes to propose mediation to the other party, it can complete the Request for WIPO Mediation and send it to the WIPO Center as well as to the other party and IPOS. The WIPO Center will then approach the other party to assist in considering the Request for WIPO Mediation.
The WIPO Center maintains an open-ended panel, including mediators, arbitrators and experts from Singapore with expertise in IP that can be appointed by parties in disputes pending before IPOS. Parties are also free to select mediators, arbitrators or experts from outside such panel.
In such proceedings, and for any dispute involving IP rights protected in Singapore, a not-for-profit Schedule of Fees for administration fees and mediator fees applies.16https://www.wipo.int/amc/en/center/specific-sectors/ipos/mediation/fees.html. In addition, IPOS makes available an Enhanced Mediation Promotion Scheme17https://www.ipos.gov.sg/growing-your-business-with-ip/funding-assistance. to encourage parties in IPOS proceedings to use mediation. The scheme funds the mediation process regardless of the outcome, so that parties can experience mediation as an attractive alternative to a hearing for resolving their disputes.
An example of a recent WIPO mediation of trademark proceedings pending before IPOS is summarised below.In the context of trademark opposition and invalidation proceedings before IPOS, the parties, a Thai individual and a US company, submitted their dispute to WIPO Mediation. A one-day mediation session took place in Singapore and, with the assistance of the mediator, the parties concluded a settlement agreement at the end of the mediation session. Through the mediation, the parties were able to settle their cross-border trademark disputes within four months of the commencement of the mediation. In addition, the parties could benefit from funding under the IPOS EMPS which subsidized the WIPO Center’s administration fee, the mediator’s fees and expenses, and the parties’ lawyers’ fees and expenses.
This efficient and pioneering collaboration between the WIPO Center and IPOS has paved the way for the WIPO Center’s growing engagement with other IP Offices around the world in the promotion and provision of ADR options to resolve IP and technology disputes outside the courts.18An overview of the WIPO Center’s collaborations with IP Offices is available at https://www.wipo.int/amc/en/center/specific-sectors/ipoffices.
WIPO ADR for Specific Sectors
The WIPO Center has developed tailored dispute resolution procedures in a number of areas,19https://www.wipo.int/amc/en/center/specific-sectors/. such as R&D and Technology Transfer,20https://www.wipo.int/amc/en/center/specific-sectors/rd/. Information and Communication Technology (ICT)21https://www.wipo.int/amc/en/center/specific-sectors/ict/. including the determination of fair, reasonable and non-discriminatory (FRAND) licensing terms,22https://www.wipo.int/amc/en/center/specific-sectors/ict/frand/. Life Sciences,23https://www.wipo.int/amc/en/center/specific-sectors/lifesciences/. FinTech,24https://www.wipo.int/amc/en/center/specific-sectors/ict/fintech. Franchising,25https://www.wipo.int/amc/en/center/specific-sectors/franchising/. Film and Media26https://www.wipo.int/amc/en/film/. and Trade Fairs.27https://www.wipo.int/amc/en/center/specific-sectors/tradefairs. In this capacity, the WIPO Center collaborates with stakeholders from the relevant sectors and provides targeted adaptations of the standard WIPO Rules, specific model clauses and fees, as well as separate lists of neutrals with expertise in the concerned area.
WIPO ADR for ICT
More than 30 per cent of the mediation and arbitration cases administered by the WIPO Center relate to ICT. Such disputes have arisen out of software agreements (for example software development, licensing, and maintenance agreements), patent licenses regarding ICT and telecommunications related agreements, outsourcing agreements and system integration agreements. Disputes in this area often relate to the quality and performance of the delivered software, timely delivery of the contracted service, source code and escrow disputes, as well as reseller disputes, among others.
With the accelerating development and adoption of technology in the area of financial services, FinTech is reshaping the way in which financial services are offered and accessed in the market. These technologies imply a constant interaction between multiple stakeholders (such as financial institutions, software developers, service providers, users), naturally generating the possibility of conflict. Disputes in the area of FinTech are increasingly being referred to WIPO ADR; mediation and arbitration allow parties to choose a mediator, arbitrator or expert with legal and technical expertise in the FinTech sector; they also provide a neutral forum in which disputes – often involving parties from multiple jurisdictions – can be resolved confidentially and through a single procedure, while preserving business relationships.
To provide effective ADR procedures that prioritize time- and cost- efficient dispute resolution in these unique business areas, the WIPO Center collaborates with relevant stakeholders in Singapore, such as SGTech28https://www.sgtech.org.sg/. and the Singapore FinTech Association (SFA).29https://singaporefintech.org/. This includes the organisation of joint events and training, the provision of procedural advice and establishment of adapted ADR, as well as preferential rates for SGTech and SFA members.
In light of the increasing importance of technical standards and the determination of FRAND terms, the WIPO Center also makes available model submission agreements that may be used to refer standards-related disputes involving telecom patents in multiple jurisdictions to WIPO Mediation or Arbitration.30https://www.wipo.int/amc/en/center/specific-sectors/ict/frand/. Developed in consultation with patent law, standardization and arbitration experts from a number of jurisdictions, the WIPO model submission agreements are designed to enable a cost-and time-effective determination of FRAND licensing terms. To facilitate the submission to WIPO ADR of FRAND-related disputes, the WIPO Center has published the Guidance on WIPO FRAND ADR.31https://www.wipo.int/export/sites/www/amc/en/docs/wipofrandadrguidance.pdf/. The WIPO Center maintains a special list of mediators, arbitrators and experts for patent standards that may be appointed in such cases.
WIPO ADR for Copyright
An increasing number of cases administered by the WIPO Center relates to copyright disputes, including digital copyright and content. Such disputes relate to, among others, licensing agreements, broadcasting agreements, collecting societies, TV formats, IT agreements, co-production agreements as well as infringements.
In Singapore, the WIPO Center collaborates with IPOS in the area of copyright disputes, offering reduced administration and mediator’s fees to businesses and creators who opt for mediation to resolve any copyright dispute in Singapore.32https://www.wipo.int/amc/en/center/specific-sectors/ipos/copyright. IPOS Press Release is available at https://www.ipos.gov.sg/media-events/press-releases/ViewDetails/singapore-and-wipo-center-collaborate-to-reduce-copyright-dispute-mediation-costs-for-creative-community.
In the area of digital copyright and content, the WIPO Center is currently conducting a Survey on the Use of Alternative Dispute Resolution Mechanisms for Business to Business (B2B) Digital Copyright- and Content-related Disputes, in collaboration with the Ministry of Culture, Sports and Tourism of the Republic of Korea and with the support of the Deep Tech Dispute Resolution Lab of the University of Oxford.33https://www.wipo.int/amc/en/center/copyright/copyright_survey.html. The Survey is expected to provide insight into B2B digital copyright- and content-related disputes across industries internationally, including the current use of mediation and arbitration, as compared to court litigation, to resolve such disputes. The Survey should also inform the potential development of tailored procedures for these types of disputes.
Since its establishment in 2010, the WIPO Center’s Office in Singapore caters to the need of IP owners, creators and users in the region to offer mediation and arbitration as cost-efficient and often more rapid and advantageous alternatives to traditional litigation. With the increasing complexity and specialization in many areas of IP, the WIPO Center adapts its ADR services to the often specific legal and business needs of certain sectors, in close cooperation in with key IP stakeholders in Singapore and around the world. Through these joint efforts, WIPO’s extensive network of IP and ADR experts and international neutrality, the WIPO Center is committed to assist parties all around the world to find innovative, practical and constructive solutions to their IP and technology disputes.
Endnotes [ + ]
|6.||↑||Effective January 1, 2020, the updated WIPO Mediation Rules facilitate, for example, party production of settlement agreements as may be required for enforcement purposes under the recently concluded United Nations Convention on International Settlement Agreements Resulting from Mediation.|
|7.||↑||The WIPO Center is available to assist parties through its Good Offices services; this could take the form of facilitating direct settlement between parties, advising parties on WIPO model contract clauses and submission agreements, and assisting the parties in submitting disputes to WIPO ADR, including through the WIPO Unilateral Request for Mediation. Further information on the WIPO Center’s Good Offices is available at https://www.wipo.int/amc/en/goodoffices.|
|10.||↑||The members of the WIPO List of Neutrals range from highly specialized practitioners and experts with knowledge in the areas of patents, trademarks, copyright, designs or other form of IP that is the subject of the dispute, to seasoned commercial dispute resolution generalists. The WIPO Center also maintains specific lists of neutrals for specific types of disputes, for example for FRAND disputes.|
|11.||↑||WIPO eADR allows parties, mediators and arbitrators in a WIPO case to securely submit communications electronically into an online docket. All case information filed in WIPO eADR is protected and encrypted to ensure confidentiality. For more information see https://www.wipo.int/amc/en/eadr/wipoeadr/.|
|12.||↑||When parties and neutrals in WIPO cases are based in different locations, they have occasionally agreed to hold meetings or hearings remotely via online tools, including videoconferencing facilities, or telephone.|
|18.||↑||An overview of the WIPO Center’s collaborations with IP Offices is available at https://www.wipo.int/amc/en/center/specific-sectors/ipoffices.|
|32.||↑||https://www.wipo.int/amc/en/center/specific-sectors/ipos/copyright. IPOS Press Release is available at https://www.ipos.gov.sg/media-events/press-releases/ViewDetails/singapore-and-wipo-center-collaborate-to-reduce-copyright-dispute-mediation-costs-for-creative-community.|