WIPO Staff Briefing June 19, 2009 WIPO Arbitration and Mediation Center Erik Wilbers

1. WIPO Staff BriefingJune 19, 2009WIPO Arbitration and Mediation CenterErik Wilbers

2. Presentation Outline • Objective • Role • Why Consider IP ADR? • Results • WIPO-administered arbitration and mediation cases • WIPO UDRP-based domain name cases • WIPO Strategic Goals • Staff and Structure • Information Technology • Challenges • Looking Ahead

3. Center Objective • WIPO • To promote the protection of IP throughout the world (WIPO Treaty) • Center • To contribute to the productive use of IP assets through the provision of quality dispute-resolution services that involve the minimum dislocation for IP assets under dispute, and to enhance the framework for the protection of IP in the Internet domain name system (Proposed P&B 2010/11) • In other words • Rights only being useful if you can enforce them, IP owners and users require effective dispute resolution tools

4. Center Role • To provide information about, and case services for, the resolution of commercial disputes between private parties involving IP and technology, through procedures other than court litigation (‘ADR’) • Resource institution • Administering authority • Principal ADR procedures • Mediation • (Expedited) Arbitration • Expert Determination • ‘Administrative’ procedures

5. Resource Institution • Producing and providing guidance about IP ADR • Stakeholder queries • Workshops and conferences • Website and publications • Providing policy input and designing special ADR procedures for particular types of IP disputes, e.g. • Domain name policies (e.g. national domains, expansion domain name system) • Recurring disputes in specific IP sectors

6. Administering Authority • Managing ADR dispute procedures based on clauses designating the Center • Under WIPO Rules, and under non-WIPO Rules (e.g. UDRP for domain names) • Case management elements include: • Procedural guidance for parties • Appointment of neutrals • Communicating with parties and neutrals • Facilitating hearings • Fee management • Online filing options (WIPO ECAF)

7. WIPO ECAF Online Case File

8. Why IP ADR? International • IP rights are often created, exploited and protected internationally, and so IP disputes often involve parties and/or commerce in multiple jurisdictions • By offering a single international forum, ADR can help avoid issues sometimes associated with court litigation • Jurisdictional competence • Consistency of results • Time and cost, especially of foreign litigation

9. Why IP ADR? Neutral Expertise • IP disputes tend to be technical/specialized • Many courts are not specialized in IP • In ADR, parties control selection of neutral(s), including expertise in the relevant legal, technical or business area • WIPO Center List of Neutrals

10. Why IP ADR? Efficiency • IP covers fast-evolving technology, used in highly competitive markets • Disputes can interfere with timely and full exploitation of such IP • ADR offers party control over dispute process, including timelines, procedure, law, language, plus final, enforceable results

11. Why IP ADR? Confidentiality • Confidentiality is often essential in IP, especially in technology • Except where public precedent is needed • Unlike public court litigation, ADR is a private mechanism • ADR (e.g. WIPO Rules) helps to preserve confidentiality regarding existence, disclosures and result of case

12. Why IP ADR? Party Relationships • IP often developed and exploited in long-term relationships between partners • Industry, SME’s, universities • ADR is a private procedure agreed by the parties and adapted to their needs in terms of process and remedies • Mediation is particularly suitable, as it is less contentious and accommodates not only party rights but also party interests

13. Why Not IP ADR? Limitations • Contractual (consensual) basis • No obligation to submit to ADR procedure without contract clause • Unsuitable for bad-faith infringement (e.g. counterfeiting) • Parties must pay fees of neutrals • Outcome binding between the parties themselves, but no public precedent

14. WIPO-Administered Arbitration and Mediation Cases • 198 (most received in last five years) (excluding referrals and ‘bons offices’) • Value in dispute from Euro 20,000 to US$ 600 million • Some examples of transactions: patent licenses, R&D agreements, software/IT, trademark coexistence and other settlement agreements, as well as patent infringement

15. WIPO-Administered Arbitration and Mediation Cases: International vs. Domestic

16. WIPO-Administered Arbitration and Mediation Cases: Types of Procedure

17. WIPO-Administered Arbitration and Mediation Cases: Subject Matter

18. WIPO-Administered Arbitration and Mediation Cases: Business Areas

19. WIPO-Administered Arbitration and Mediation Cases: Settlement Rates

20. WIPO UDRP-based Domain Name Cases

21. Top 25 WIPO UDRP Country Filing

22. Areas of WIPO UDRP Complainant Activity

23. WIPO Strategic Goals • Principally serving WIPO Goal II: Provision of Premier Global IP Services • Also contributing towards other WIPO Goals, including: • WIPO Goal VI: International Cooperation on Building Respect for IP • WIPO Goal VII: Addressing IP in Relation to Global Policy Issues

24. Staff and Structure • 1.4% of WIPO budget • 38 team members (CAM building) • Secretariat • Case Managers • Senior Lawyers • IT, publications and event support staff • 27 nationalities from all continents • 4 Sections • IP Dispute Management (Mr. de Castro, Head) • Legal Development (Ms. Min, Head) • Information and External Relations (Mr. Rattray, Head) • Domain Name Dispute Resolution (‘vacant’)

25. Information Technology • Databases • UDRP-based domain name case management • Online legal index • Country-code top level domains • Temporary procedures (‘Sunrise’) • Arbitration and mediation cases • Tailored schemes initiatives • Neutrals • ‘ECAF’: web-based case file • Web site • 48,000 pages • Over 3 million page views in 2008 • Email • 1 million in UDRP cases • Daily decision subscription

26. Challenges • Running and upgrading case operations at the same time • Resource management: balancing staff and funding levels with dynamic demand • As a market-oriented service, achieving synergies with other parts of our public organization • Mixture of case and policy work that must respond to fast-moving developments in the Domain Name System • Extensive competition in ADR, involving many established providers with captive domestic markets • Center being ‘Geneva-based’, broadening its potential ‘appeal’ to other regions (e.g. Asia)

27. Looking Ahead (Arbitration, Mediation, Expert Determination) • Upgrading infrastructure, e.g. • Next generation ECAF • Expert determination guidance • Exploration/development of tailored schemes, e.g. • AGICOA • Art and cultural heritage • Biodiversity, life sciences • Film industry • Research collaboration and technology transfer • Telecommunications

28. Looking Ahead (Domain Names) • Upgrading UDRP infrastructure • WIPO e-UDRP Initiative • Jurisprudential overview • Index review • Domain name policy proposals and system design for IP protection in ICANN New gTLD Program, including: • Rights Protection Mechanism (RPM), a rapid suspension option complementing UDRP • ‘Post-delegation’ Dispute Resolution Procedure for Registries (and possibly Registrars)

29. Thank You! • arbiter.mail@wipo.int