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Guide to WIPO Arbitration http://www.wipo.int/amc WIPO ARBITRATION AND MEDIATION CENTER

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Guide to WIPO Arbitration

http://www.wipo.int/amc

WIPO ARBITRATIONANDMEDIATION CENTER

B

CONTENTSINTRODUCTIONWORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)THE WIPO ARBITRATION AND MEDIATION CENTERWIPO PROCEDURESWHERE DOES A WIPO ARBITRATION TAKE PLACE?ARBITRATION AND MEDIATION COMPAREDTHE WIPO ARBITRATION EXPERIENCETHE WIPO CENTER’S PRIORITIES IN ARBITRATIONWHAT TYPES OF DISPUTES CAN BE ARBITRATED AT WIPO?WHEN IS ARBITRATION APPROPRIATE IN INTELLECTUAL PROPERTY DISPUTES?THE LEGAL FRAMEWORK OF AN ARBITRATION PROCEEDINGTHE WIPO ARBITRATION AND EXPEDITED ARBITRATION RULESINSTITUTIONAL OR AD HOC ARBITRATION?THE WIPO ARBITRATION AND MEDIATION CENTER AS ADMINISTERING AUTHORITYWIPO ECAFWIPO CONTRACT CLAUSES AND SUBMISSION AGREEMENTSHOW IT WORKS: THE PRINCIPAL STEPS IN WIPO ARBITRATIONWIPO EXPEDITED ARBITRATIONWIPO ARBITRATION AND EXPEDITED ARBITRATION COMPAREDTHE LANGUAGE USED IN THE ARBITRATIONHOW ARE WIPO ARBITRATORS APPOINTED?APPOINTMENT OF ARBITRATORS THROUGH THE LIST PROCEDUREHOW MANY ARBITRATORS SHOULD BE APPOINTED?WHO ARE THE WIPO ARBITRATORS?HOW IS THE IMPARTIALITY AND INDEPENDENCE OF WIPO ARBITRATORS SAFEGUARDED?WHAT ARE THE POWERS OF THE TRIBUNAL?WIPO CENTER WEB SITE AND PUBLICATIONSEVIDENCE IN WIPO ARBITRATION PROCEEDINGSHOW IS CONFIDENTIALITY MAINTAINED IN A WIPO ARBITRATION?WIPO ARBITRATION WORKSHOPSIS INTERIM RELIEF AVAILABLE? WHAT TYPES OF DECISIONS CAN AN ARBITRAL TRIBUNAL TAKE?CAN AN AWARD BE APPEALED?HOW CAN AN AWARD BE ENFORCED?WHAT DOES WIPO ARBITRATION COST AND WHO PAYS?WIPO SCHEDULE OF ARBITRATION FEESRECOMMENDED WIPO CONTRACT CLAUSES AND SUBMISSION AGREEMENTS

CASE EXAMPLES: PAGES 6, 8, 11, 19, 32

GUIDE TO WIPO ARBITRATION

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Arbitration is probably thebest known alternative tocourt litigation. It is aprocedure in which adispute is submitted, byagreement of the parties, toone or more arbitrators fora binding decision. Inchoosing arbitration, theparties opt for a privatedispute resolution procedureinstead of going to court.

While arbitration hasbecome well established ininternational business, it hastraditionally been used lessfrequently in intellectualproperty (IP) disputes. Thismay partly be due to deeplyingrained notions ofnational sovereignty andterritoriality. IP hastraditionally been regardedprimarily as a means toexclude others from usingcertain protected subjectmatter - through courtlitigation if necessary.

The perspective haschanged: for many

companies, IP has becometheir essential business assetas well as a means ofcreating value. It is exploitedon an increasinglyinternational level in variousforms of collaborativearrangements, such aslicenses, technology transferagreements, and research anddevelopment agreements.As a consequence, partiesincreasingly look for disputeresolution mechanisms thatmatch their businessrequirements: privateprocedures which provideefficient and flexible meansof settling internationaldisputes without disruptingcommercial relationships.

Arbitration can be anefficient alternative to courtlitigation. This does notmean that arbitration willbe the best solution in eachand every dispute; litigationand other alternatives, suchas mediation, may well bepreferable in certainsituations. To be able tochoose the procedure thatbest fits their needs, IP

owners and their lawyersshould, however, be familiarwith all their disputeresolution options.

This booklet provides basicinformation on WIPOarbitration. It sets out themain benefits andlimitations of arbitration inIP disputes, provides apractical explanation of thevarious stages and elementsof a WIPO arbitrationprocedure, and describeshow the WIPO Arbitrationand Mediation Center canassist parties and arbitratorsin the time and costefficient management oftheir case. Additionalinformation is available atthe Center’s web site or byemail or telephone from theCenter staff.

INTRODUCTION

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The WIPO Arbitration and Mediation Center is an independent part of the World Intellectual PropertyOrganization (WIPO), an intergovernmental organization whose mandate is to promote the protection ofintellectual property. A largely self-financed organization, WIPO is based in Geneva, Switzerland and has184 Member States.

WIPO has a history of over 120 years, going back to 1883, when the Paris Convention for the Protectionof Industrial Property was adopted, and to 1886, when the Berne Convention for the Protection of Literaryand Artistic Works was adopted.

WIPO administers 24 multilateral intellectual property treaties, including the Patent Cooperation Treaty(PCT) and the Madrid System, which facilitate patent and trademark applications and registrations in dif-ferent countries.

The WIPO Arbitration and Mediation Center

Based in Geneva, Switzerland, the WIPO Arbitration and Mediation Center was established in 1994 to pro-mote the resolution of IP and related disputes through alternative dispute resolution (ADR). To achieve thisobjective, it developed – with the active involvement of ADR and IP practitioners and scholars – the WIPOMediation, Arbitration, Expedited Arbitration and Expert Determination Rules and Clauses.

The Center is the only international provider specializing in technology, entertainment and IP disputes. Itsservices, however, are not limited to such disputes. Since its establishment, the Center has also adminis-tered arbitrations involving general contractual issues, financing transactions and employment contracts.

The Center maintains a detailed database of well over 1,500 outstanding IP and ADR specialists who areavailable to act as neutrals. The Center’s extensive network of IP and ADR experts and its position as partof the World Intellectual Property Organization ensure that its procedures meet the specific needs of IP dis-pute resolution. The Center also plays a leading role in the design and implementation of tailor-made dis-pute resolution procedures, such as the Uniform Domain Name Dispute Resolution Policy (UDRP).

The Center’s staff consists of highly qualified and multilingual legal professionals with expertise in intellec-tual property and ADR. Their detailed qualifications and contact details are available athttp://www.wipo.int/amc/en/contact/.

WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)

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The WIPO Arbitration andMediation Center offersrules and neutrals for thefollowing procedures:

> Mediation: an informalprocedure in which aneutral intermediary, themediator, assists theparties in reaching asettlement of the dispute.(Depending on theparties’ choice, mediationmay be followed, in theabsence of a settlement,

by arbitration, expeditedarbitration or expertdetermination.)

> Arbitration: a bindingprocedure in which thedispute is submitted toone or more arbitratorswho make a finaldecision on the dispute.(Depending on theparties’ choice, arbitrationmay be preceded bymediation or expertdetermination.)

> Expedited Arbitration: anarbitration procedure thatis carried out in a shorttime and at a reducedcost. (Depending on theparties’ choice, expeditedarbitration may bepreceded by mediation orexpert determination.)

> Mediation followed, inthe absence of asettlement, by [expedited]arbitration: a procedurethat combines mediationand, where the dispute isnot settled through themediation, arbitration.

> Expert Determination: aprocedure in which atechnical, scientific orrelated business issuebetween the parties issubmitted to one or moreexperts who make adetermination on thematter. The determinationis binding, unless theparties have agreedotherwise. (Depending onthe parties’ choice, expertdetermination may bepreceded by mediation orfollowed by (expedited)arbitration.)

WIPO PROCEDURES

WIPO CONTRACTCLAUSE /SUBMISSIONAGREEMENT

MEDIATION

EXPERTDETERMINATION

EXPEDITEDARBITRATION

ARBITRATION

SETTLEMENT AWARDDETERMINATION

The WIPO Rules areappropriate for allcommercial disputes.However, they containprovisions on confidentialityand technical andexperimental evidence thatare of special interest toparties to intellectualproperty disputes.

WIPO arbitration andmediation cases haveincluded parties from amultitude of countries.These cases wereadministered in differentlanguages and took place invenues around the world.

General up-to-dateinformation on the WIPOArbitration and MediationCenter’s caseload isavailable athttp://www.wipo.int/amc/en/center/caseload.html.

While neither party mayunilaterally resort to courtlitigation once a dispute hasbeen submitted toarbitration, arbitration canbe combined withmediation, a non-bindingprocedure in which aneutral intermediary, themediator, assists the partiesin reaching a negotiatedsettlement of the dispute. Ina growing number of cases,parties agree to first try tosettle their dispute throughmediation, and to resort toarbitration only if thedispute has not been settledwithin a certain period oftime. Such clauses combinethe flexibility of mediationwith the binding force ofarbitration should mediationfail to produce a settlement.The Center has developedmodel clauses andsubmission agreementswhich are reproduced in the

back of this booklet. Thefollowing table provides anoverview of the variousdispute resolution optionsoffered by the Center andtheir possible combinations.Whichever option partieschoose, the Center aims forthe process to be as fair andefficient as possible.

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Where Does a WIPO Arbitration Take Place?

In a WIPO arbitration, meetings or hearings may take place anywhere in the world for the convenience ofparties, arbitrators and witnesses, regardless of the chosen legal place of arbitration, which is not neces-sarily linked to the physical location of the proceedings. The tribunal’s deliberations are also not limited tothe place of arbitration or the venue of the hearing. (Article 39)

Expedited Arbitration

10%

Arbitration 49%

Mediation 41%

Cases Filed with the WIPO Arbitration and Mediation Center

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PARTIES

ARBITRATOR/MEDIATOR

BASIS

OUTCOME

ARBITRATIONOnce the parties have validly agreed tosubmit a dispute to arbitration, neitherparty can unilaterally withdraw fromthe procedure.The tribunal has the authority torender a final award.

The tribunal addresses the parties’legal positions on the basis of theapplicable substantive law.

Awards are binding on the parties,final and enforceable on a par withcourt decisions.

MEDIATIONEither party can unilaterally withdrawfrom the procedure (after a firstmeeting with the mediator).

The mediator functions as a“catalyst,” a settlement facilitator, butcannot impose a settlement on theparties.Any settlement is agreed by theparties and is based on the parties’interests, which may be broader thantheir legal positions.Any settlement agreement is bindingbetween the parties as a matter ofcontract law.

ARBITRATION AND MEDIATION COMPARED

While both arbitration andmediation are private disputeresolution procedures basedon party agreement, theydiffer in a number ofimportant aspects.Arbitration is an adjudicativeprocedure and in thisrespect resembles courtlitigation. Once the parties

have submitted a dispute toarbitration, neither partycan opt out unilaterally, andany decision rendered bythe arbitral tribunal will bebinding on both parties.Mediation, in contrast, is avoluntary process whichdepends on the continuingcooperation of both parties

since either party canwithdraw at any time. Onemight say that in arbitrationthe parties retain the servicesof a private decision-maker,while in mediation they hirea settlement facilitator.

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THE WIPO ARBITRATION EXPERIENCE

Parties to WIPO arbitrationproceedings have been basedin different jurisdictions,including China, France,Germany, Hungary, Italy, the Netherlands, Panama,Spain, Switzerland, the United Kingdom and the United States of America.These proceedings havecovered contractual as wellas non-contractual disputes(e.g. infringement) involvinga wide variety of IP andcommercial issues. Amountsin dispute have variedbetween US$ 200,000 toEuro 90 million. The remedies

claimed in arbitrationproceedings have includeddamages, infringementdeclarations and specificperformance.

WIPO clauses can be foundin a wide variety of contractsinvolving IP, including patent,know-how and softwarelicenses, franchises,trademark coexistenceagreements, distributioncontracts, joint ventures,research and developmentcontracts, technology-sensitive employmentcontracts, mergers and

acquisitions with importantIP aspects, sports marketingagreements, and publishing,music and film contracts.WIPO clauses are found mostfrequently in agreementsentered into by parties fromdifferent jurisdictions.

General up-to-dateinformation on the Center’scaseload is available athttp://www.wipo.int/amc/en/center/caseload.html.

Case example: A WIPO Trademark Arbitration

A North-American software developer had registered a trademark for communication software in theUnited States and Canada. A manufacturer of computer hardware based elsewhere registered an almostidentical mark for computer hardware in a number of Asian countries. Both parties had been engaged inlegal proceedings in various jurisdictions concerning the registration and use of their marks. Each partyhad effectively prevented the other from registering or using its mark in the jurisdictions in which it holdsprior rights. In order to facilitate the use and registration of their respective marks worldwide, the partiesentered into a coexistence agreement which contains a WIPO arbitration clause. When the North-American company tried to register its trademark in a particular Asian country, the application was refusedbecause of a risk of confusion with the prior mark held by the other party. The North-American companyrequested that the other party undertake any efforts to enable it to register its mark in that Asian countryand, when the other party refused, initiated arbitration proceedings.

Following proposals made by the Center, the parties appointed a leading IP lawyer as sole arbitrator. In aninterim award the sole arbitrator gave effect to the consensual solution suggested by the parties, whichprovided for the granting by the hardware manufacturer of a license on appropriate terms to the North-American company, including an obligation to provide periodic reports to the other party.

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The Center is committed toensuring that WIPOprocedures move forward asefficiently as possible withoutcompromising fairness anddue process. Whenadministering arbitrationcases, the Center is guidedby the following priorities:

> Flexible proceduralframework: The WIPOArbitration and ExpeditedArbitration Rules combinelegal certainty withpractical flexibility. Theprocedural frameworkcan be amended by partyagreement. The tribunalconducts the proceedingsin consultation with theparties withoutbureaucratic interventionor time-consumingformalities.

> Active case management:Each case is activelymanaged by a Centerlawyer who tracksdeadlines, ensures optimalcase communication, and provides proceduralinformation andadministrative assistance

to the parties and thetribunal.

> Efficiency: Disputesshould be handled withthe same concern forefficiency and economythat characterizes theunderlying businesstransaction. WIPOregistration andadministration fees arecalculated on a non-profitbasis and are thereforecomparatively moderate.The Center’s worldwidecontacts enable it to helpnegotiate favorablearbitrator feearrangements for parties.Moreover, in expeditedarbitration proceedings,the fees are fixed wherethe value in dispute doesnot exceed US$ 10million, thus offering theparties a high degree ofcertainty regarding theircost exposure.

> Expertise: The success ofan arbitration depends toa large extent on thetribunal. Choosing andappointing the right

arbitrator(s) is probablythe most important stepin any arbitration. TheCenter’s network ofexperienced arbitrationand IP specialists allows itto propose and appointarbitrators who combineprocedural expertise withknowledge of therelevant legal, technicalor business areas of IP.

> Integrity: The Centermonitors the overallintegrity and fairness ofWIPO arbitrationprocedures. The Centerverifies the impartialityand independence ofcandidates beforeappointment and retainsthe authority to replacearbitrators whenjustifiable doubts arise asto their independence orimpartiality. Awardsrendered in a WIPOarbitration have theimprimatur of a respectedinternational organization.

THE WIPO CENTER’S PRIORITIES IN ARBITRATION

8

WHAT TYPES OF DISPUTES CAN BE ARBITRATEDAT WIPO?

WIPO arbitration may beused to resolve all types ofcommercial disputes. It isparticularly appropriate fordisputes involving IP ortechnology more generally,such as disputes arisingfrom patent, trademark orcopyright licenses, researchand developmentagreements, softwaredevelopment contracts,

distribution agreements,franchises, and trademarkcoexistence agreements.

The procedures are open to any person or entity,regardless of nationality ordomicile, and may be heldanywhere in the world, inany language and under anylaw chosen by the parties.

Telecommuni-cations/IT

22%

Copyright 9%

Other 18%

Patent 46%

Trademarks 5%

Case Example: A WIPO Copyright Mediation Followed by Expedited Arbitration

A publishing house entered into a contract with a software company for the development of a new webpresence. The project had to be completed within one year and included a clause submitting disputes toWIPO mediation and, if settlement could not be reached within 60 days, to WIPO expedited arbitration.After 18 months, the publishing house was not satisfied with the services delivered by the developer,refused to pay, threatened rescission of the contract and asked for damages. The publishing house filed arequest for mediation. While the parties failed to reach a settlement, the mediation enabled them to focusthe issues that were addressed in the ensuing expedited arbitration proceeding.

Following the termination of the mediation, the publishing house initiated expedited arbitration proceed-ings. The Center appointed a practicing judge as sole arbitrator who had been agreed by the parties. Thearbitrator conducted a one-day hearing in the course of which the parties expressed their desire to settletheir case, asking the arbitrator to prepare a settlement proposal. The parties accepted the arbitrator’s pro-posal and requested the arbitrator to issue a consent award. In addition to confirming the terms of the set-tlement, the consent award made reference to a press release to be published by the parties announcingthe settlement of their dispute.

Subject Matter of Cases Filed with theWIPO Arbitration and Mediation Center

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When determining theappropriate means forresolving an IP or technologydispute, parties shouldconsider the followingcharacteristics of arbitration.

> A single neutralprocedureMany IP or technologydisputes involve partiesfrom different countriesand relate to rights thatare protected in severaljurisdictions. In suchcases, court litigation maywell involve a multitudeof procedures in differentcountries. Througharbitration, the parties canagree to resolve theirdispute under a single lawand in a single forum,thereby avoiding theexpense and complexityof multi-jurisdictionallitigation.

> Party autonomyBecause of its privatenature, arbitration offersparties the opportunity toexercise greater control

over the way theirdispute is resolved.Depending on theirneeds, they can selectstreamlined or moreextensive procedures, andchoose the applicablelaw, place and languageof the proceedings.

> NeutralityArbitration can be neutralto the law, language andinstitutional culture of theparties and thus avoidany home courtadvantage that one ofthe parties may enjoy inthe context of courtlitigation, wherefamiliarity with theapplicable law and localprocesses can offersignificant strategicadvantages.

> ExpertiseThe parties can selectarbitrators who havespecial expertise in thelegal, technical orbusiness area relevant tothe resolution of theirdispute.

> ConfidentialityThe parties can keep theproceedings and anyresults confidential. Thisallows the focus to bekept on the merits of thedispute, and may be ofspecial importance where- as often the case in IPor technology disputes -commercial reputationsand trade secrets are atstake.

> Finality of awardsUnlike court decisions,which can generally becontested through one ormore rounds of litigation,arbitral awards are notnormally subject toappeal.

> Enforceability of awardsThe Convention for theRecognition andEnforcement of ForeignArbitral Awards of 1958,known as the New YorkConvention, provides forrecognition of awards ona par with domestic courtjudgments withoutreview on the merits. This

WHEN IS ARBITRATION APPROPRIATE ININTELLECTUAL PROPERTY DISPUTES?

10

greatly facilitates theenforcement of awardsacross borders.

Arbitration may not beappropriate in every IPdispute. A party may wishto obtain a publicprecedent-setting decisionfrom a national court.Where there is deliberatebad faith on the part of oneparty, such as in counterfeit

cases, consensualprocedures such asarbitration may also not beappropriate.

Traditionally, arbitrability, thequestion of whether thesubject matter of a disputemay be resolved througharbitration, arose in relationto arbitration of certain IPdisputes. As IP rights, suchas patents, are granted by

COMMON FEATURES

OF MANY IP DISPUTES

INTERNATIONAL

TECHNICAL

URGENT

REQUIRE FINALITY

CONFIDENTIAL/TRADE

SECRETS AND RISK TO

REPUTATION

COURT LITIGATION

> Multiple proceedings underdifferent laws, with risk ofconflicting results

> Possibility of actual or perceivedhome court advantage of partylitigating in its own country

> Decision maker might not haverelevant expertise

> Procedures often drawn-out> Injunctive relief available in certain

jurisdictions

> Possibility of appeal

> Public proceedings

ARBITRATION

> Single proceeding under the lawdetermined by parties

> Arbitral procedure and nationalityof arbitrator can be neutral to law,language and institutional cultureof parties

> Parties can select arbitrator(s) withrelevant expertise

> Arbitrator(s) and parties canshorten procedure

> Arbitrators may render provisionalmeasures, parties not precludedfrom seeking court injunctions

> Limited appeal option

> Proceedings and awards areconfidential

national authorities, it wasargued that disputesregarding such rights shouldbe resolved by a public bodywithin the national system.

However, it is now broadlyaccepted that disputesrelating to IP rights arearbitrable, like disputesrelating to any other type ofprivately held rights. Anyright of which a party can

dispose by way ofsettlement should, inprinciple, also be capable ofbeing the subject of anarbitration since, like asettlement, arbitration isbased on party agreement.

As a consequence of theconsensual nature ofarbitration, any awardrendered will be bindingonly on the parties involvedand will not as such affectthird parties.

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Case Example: A WIPO Arbitration of a Biotech/Pharma Dispute

A French biotech company, holder of several process patents for the extraction and purification of a com-pound with medical uses, entered into a license and development agreement with a large pharmaceuticalcompany. The pharmaceutical company had considerable expertise in the medical application of the sub-stance related to the patents held by the biotech company. The parties included in their contract a clausestating that all disputes arising out of their agreement would be resolved by a sole arbitrator under theWIPO Arbitration Rules.

Several years after the signing of the agreement, the biotech company terminated the contract, allegingthat the pharmaceutical company had deliberately delayed the development of the biotech compound.The biotech company filed a request for arbitration claiming substantial damages.

The Center proposed a number of candidates with considerable expertise of biotech/pharma disputes, oneof whom was chosen by the parties. Having received the parties’ written submissions, the arbitrator helda three-day hearing in Switzerland for the examination of witnesses. This not only served for the presen-tation of evidence but also allowed the parties to re-establish a dialogue. In the course of the hearing, thearbitrator began to think that the biotech company was not entitled to terminate the contract and that itwould be in the interest of the parties to continue to cooperate towards the development of the biotechcompound.

On the last day of the hearing, the parties accepted the arbitrator’s suggestion that they should hold a pri-vate meeting. As a result of that meeting, the parties agreed to settle their dispute and continued to coo-perate towards the development and commercialization of the biotech compound.

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Arbitration is a privatemechanism, but does nottake place in a legal vacuum.Typically, different systems oflaw interact, most notablythe law governing thesubstance of the dispute, thelaw governing the arbitrationprocess itself and the lawgoverning the arbitrationagreement.

Law Applicable to theSubstance of the DisputeIn general, parties are free tochoose for themselves thelaw applicable to thesubstance of the dispute.Under the WIPO ArbitrationRules, when the parties failto agree on the choice ofsubstantive law, the tribunalapplies the law that it deemsappropriate. The tribunalmay also decide “in equity”(as amiable compositeur or ex aequo et bono), providedthat the parties haveexpressly authorized it to doso. (Article 59)

Law Applicable to theArbitrationThe law applicable to thearbitration (lex arbitri orarbitral law) is the law thatgoverns the proceduralframework, such as whethera dispute is arbitrable, theavailability of interim measuresof protection, the conduct ofthe arbitration, and theenforceability of the award.Subject to such arbitral law,parties are free to designate aset of rules governing theconduct of the arbitration,such as the WIPO Rules.

The law applicable to thearbitration is usually the lawof the chosen place of anarbitration. For example, ifthat place is Geneva,Switzerland, the arbitrationwill be subject to Swissarbitration law.

Thus, in determining theplace of arbitration, the parties select the arbitrallaw. If the parties fail toreach such an agreement,under the WIPO Rules, the Center decides theplace of arbitration taking

into consideration anyobservations made by theparties and the circumstancesof the arbitration (Article39). The arbitral law neednot be the same as the lawapplicable to the substanceof the dispute. A tribunalmay, for example, be subjectto the arbitral law ofSwitzerland, but may berequired, by party agreement,to apply English law to thesubstance of the dispute.

It is important for parties tochoose an arbitral law that:

> Provides support to thearbitration wherenecessary: examplesmay relate to taking ofevidence or rendering ofconservatory or interimmeasures;

> Does not unnecessarilyinterfere with thepending arbitration.Today, most arbitral lawscontain only a limitednumber of mandatoryprovisions and generallygive deference to thearbitration rules chosenby the parties.

THE LEGAL FRAMEWORK OF AN ARBITRATIONPROCEEDING

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The WIPO Arbitration and Expedited Arbitration Rules

The Center administers arbitration procedures under the WIPO Arbitration Rules and under the WIPOExpedited Arbitration Rules. By agreeing to submit a dispute to WIPO (expedited) arbitration, the partiesadopt the WIPO (Expedited) Arbitration Rules as part of their agreement to arbitrate their dispute. TheWIPO Rules have been designed to fit all commercial disputes. Furthermore, they contain certain provisionsthat specifically accommodate the characteristics of intellectual property disputes.

The WIPO Rules: > ensure that the arbitral proceedings are conducted expeditiously;> empower the tribunal to issue interim measures of protection;> provide streamlined procedures relating to the submission of scientific, techni-

cal or other specialized evidence;> set out extensive provisions governing the confidentiality of the existence of

the arbitration, disclosures made during the arbitration and the award; > make specific provision for the protection of trade secrets in the context of an

arbitration.

Parties are free to modify the WIPO Rules in order to tailor the arbitration proce-dure to the requirements of their dispute.

Law Applicable to theArbitration AgreementThe validity of thearbitration agreement isnormally governed by thelaw applicable to thecontract of which it formspart, or, more generally,the law applicable to the

substance of the dispute.Under the WIPOArbitration Rules, anarbitration agreement iseffective if it conforms tothe law applicable to thesubstance or to the lawapplicable to thearbitration. (Article 59(c))

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Arbitration can be“institutional” or “ad hoc.”In an ad hoc arbitration, theparties and, after itsappointment, the tribunal,administer the proceedingsthemselves. This requiressufficient cooperationamong the parties as well asconsiderable experience onthe part of the parties andthe tribunal. Whenproblems arise in an ad hocarbitration, for example ininitiating the arbitration, inconstituting the tribunal orin dealing with challengesto arbitrators, the partiesmay require the assistanceof a national court of justiceat the place of arbitration.This, however, may well becumbersome, time-consuming and costly.

In an institutionalarbitration, the arbitralinstitution, such as theWIPO Arbitration andMediation Center, providesa procedural andadministrative frameworkfor initiating and conductingthe arbitration. Thisfacilitates the parties’

participation in theprocedure and reduces anyneed for recourse to anational court of justice.

Typically the administeringinstitution provides:

> a tested set ofprocedural rules,

> access to qualifiedarbitrators, and

> an administrative andsupervisoryinfrastructure.

Thus, with institutionalarbitration, the parties andthe tribunal can focus theirtime and energy onresolving the dispute andlessen the burden of dealingwith procedural concernsand administrativearrangements.

Some view institutionalarbitration as being lessflexible, more bureaucraticand more costly.Institutional arbitration canbe as flexible and efficientas the arbitration rules andthe institution chosen. TheWIPO Arbitration and

Expedited Arbitration Rulesare entirely open to beingmodified by partyagreement, while at thesame time providing a firmprocedural basis where theparties have not determinedotherwise. In administeringarbitrations, the Centerleaves as much room forparty input as possible,while making sure that theprocedure moves aheadwith due expedition.

While an arbitrationinstitution will typicallycharge a separate fee, thisfee covers services whichwould otherwise have to beperformed, or hired, by theparties or the tribunal. Forthe relatively moderate feescharged by the WIPOArbitration and MediationCenter, the parties receive awide range of professionalprocedural andadministrative services.

INSTITUTIONAL OR AD HOC ARBITRATION?

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WIPO ECAF

Parties may elect to use the WIPO Electronic Case Facility (WIPO ECAF) to manage disputes filed under theWIPO Rules. With WIPO ECAF, parties, neutrals and the Center may securely file, store, search and retrievecase-related submissions in an electronic case file from anywhere in the world and at any time. When asubmission is made, all parties receive an e-mail alert and may view the case file. The parties in some ofthe more complex of the Center’s recent cases successfully opted to use WIPO ECAF, a customized versionof which was further used for 35 disputes under the Jury procedure of the America’s Cup high-tech yach-ting competition. Such experiences drive further improvements in the regular WIPO ECAF system, helpingto confirm WIPO’s position in the area of online dispute resolution.

THE WIPO ARBITRATION AND MEDIATION CENTERAS ADMINISTERING AUTHORITY

To facilitate the resolution ofcommercial disputes, theWIPO Arbitration andMediation Center:

> helps parties submitexisting disputes toWIPO procedures incases where they hadnot previously agreed ona WIPO clause;

> provides proceduralrules which areparticularly suited to IP,technology orentertainment disputes;

> assists in the selection ofarbitrators from theCenter’s database ofover 1,500 neutrals withrelevant expertise;

> liaises with parties andneutrals to ensureoptimal casecommunication andprocedural efficiency;

> monitors the proceduresso as to expedite theprogress of thearbitration;

> sets the arbitrators’ fees,after consultation withthe parties and thearbitrators, andadministers the financialaspects of theproceedings;

> can arrange meetingsupport services,including hearingrooms, party retiring

rooms, recordingequipment,interpretation andsecretarial assistance.Where the procedure isheld at WIPO in Geneva,the rooms are providedfree of charge.

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The WIPO Arbitration Rulescontain procedural rules forthe conduct of thearbitration and lay downtime limits for each stage ofthe procedure, seeking tobring about a timely closureof the proceedings andrendering of an award.

Starting the ArbitrationA WIPO arbitration iscommenced by the claimantsubmitting to the WIPOCenter a Request forArbitration. The date ofcommencement of thearbitration is the date onwhich the Request is

received by the Center. TheRequest for Arbitrationshould contain summarydetails concerning thedispute, including thenames and communicationdetails of the parties andtheir representatives, a copyof the arbitration

HOW IT WORKS: THE PRINCIPAL STEPS IN WIPO ARBITRATION

WIPO Contract Clauses and Submission Agreements

The parties’ agreement to arbitrate provides the legal foundation for the jurisdiction of the tribunal. Suchagreement may relate to future or existing disputes, and may take the form of an arbitration contract clauseor a separate submission agreement.

To facilitate party agreement, the Center provides model arbitration clauses and submission agreements. Itis recommended that parties follow these models as closely as possible in order to avoid any uncertaintywhich might unnecessarily burden the arbitration proceeding. The WIPO model clauses essentially consist oftwo parts:

> an unambiguous submission of future or existing disputes to arbitration or expedited arbitration underthe WIPO Rules;

> a determination regarding a number of essential elements on which parties should, if possible, reachagreement before the arbitration is initiated, including: the applicable law, the place of arbitration, thenumber of arbitrators, and the language of the proceeding.

The Center’s recommended clauses are reproduced at the end of this booklet and may be downloadedfrom http://www.wipo.int/en/clauses/index.html.

If appropriate, the Center can assist the parties in adapting the model clauses to the circumstances of theircontractual relationship. For example, special clauses can be drafted for commercial situations in which alimited number of companies are frequently involved in disputes with each other that concern overlappingIP rights.

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agreement, a briefdescription of the dispute,the relief sought, and anyrequests or observationsrelating to the appointmentof the tribunal. A comprehensive statementof facts and legal arguments,including a statement of therelief sought, may be left to the Statement of Claim

30 days

30 days

30 days

30 days

3 months

20 days

1 month

Request for Arbitration

Answer to Request for Arbitration

Appointment of Arbitrator(s)

Statement of Claim

Statement of Defense

Further Written Statements and Witness Statements

Hearing

Closure of Proceedings

Final Award

PRINCIPAL STEPS IN WIPO ARBITRATIONAND EXPEDITED ARBITRATION

30 days

3 months

Request for Arbitration and Statement of Claim

Answer to Request for Arbitrationand Statement of Defense

Appointment of Arbitrator

Hearing

Closure of Proceedings

Final Award

9 months

WIPO EXPEDITEDARBITRATION

WIPO ARBITRATION

to be filed after theappointment of the tribunal.

Within 30 days of receipt ofthe Request for Arbitration,the respondent must file anAnswer to the Request,which should containcomments on elements ofthe Request for Arbitrationand may include indicationsof a counter-claim or set-off. If the claimant filed itsStatement of Claim with theRequest for Arbitration, theAnswer to the Request mayalso be accompanied by theStatement of Defense.(Articles 6-13)

Establishing the TribunalThe parties may choose thenumber of arbitrators onthe tribunal. In the absenceof agreement, the Centerappoints a sole arbitrator,except in cases where theCenter determines in itsdiscretion that a tribunal ofthree arbitrators is moreappropriate. A typical three-member tribunal consists oftwo party-appointedarbitrators and a presidingarbitrator appointed by the

18

two party-appointedarbitrators. More detailedinformation about theselection and appointmentof arbitrators under theWIPO Arbitration Rules isprovided on page 22.(Articles 14-36)

Conducting the ArbitrationThe Statement of Claimmust be filed within 30 daysof the constitution of thetribunal and the Statementof Defense must be filedwithin 30 days of thereceipt of the Statement ofClaim. The tribunal mayschedule furthersubmissions. Soon after ithas been established, thetribunal will holdpreparatory discussions on,inter alia, case schedule,hearing dates, evidence andconfidentiality stipulations.(Articles 41-47)

If a party requests, or bytribunal discretion, a hearingmay be held for thepresentation of evidence bywitnesses and experts andfor oral argument. If nohearing is held, theproceedings are conductedon the basis of submitteddocuments and othermaterials. (Articles 53-55)

When the tribunal is satisfiedthat the parties have hadadequate opportunity topresent submissions andevidence, it will declare theproceedings closed. Thisshould happen within ninemonths of either the deliveryof the Statement of Defenseor the establishment of thetribunal, whichever occurslater. The final award shouldbe delivered by the tribunalwithin three months of theclosure of the proceedings.

The award becomeseffective and binding on theparties as from the date it iscommunicated by theCenter. International arbitralawards are enforced bynational courts under theNew York Convention.(Articles 57-66)

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The WIPO Arbitration Rulesrequire arbitrators to ensurethat the procedure takesplace with due expedition,and the Center activelymonitors progress. Inaddition, the parties canagree to adjust theprocedural framework in away that is likely to expedite

the proceedings by, forexample, shorteningdeadlines or limiting thenumber of submissions byeither party. Nevertheless, itcan be difficult to predicthow much time anarbitration will take. Itsduration will typicallydepend on many factors,

such as the complexity ofthe dispute and thewillingness of the parties tocooperate.

Parties who place apremium on time-effectiveness can opt for theprocedural frameworkestablished by the WIPO

Case Example: A WIPO Expedited Arbitration Relating to an Artistic Production Finance Agreement

A producer of artistic performances entered into an agreement with an insurance company to finance arbi-tration proceedings. The finance agreement included a WIPO expedited arbitration clause. The producerbrought arbitration proceedings against an Asian entity in Singapore. The producer claimed the costs of theSingapore arbitration under its finance agreement. Faced with the financing company’s apparent refusal tomake such payment, the producer filed WIPO expedited arbitration proceedings indicating that, as a result ofthe deadline imposed by the arbitral tribunal in Singapore, it required a final award within six weeks of thecommencement of the WIPO expedited arbitration. Following consultations with the parties, the WIPO Centerappointed a sole arbitrator. After a one-day hearing, the sole arbitrator issued an award within five weeks.

Case Example: A WIPO Expedited Arbitration of a Trademark Coexistence Dispute

A European company had registered a trademark for luxury goods in different countries. An Asian manufac-turer started to sell fashion products under a similar registered trademark. The Asian company filed a courtcase and administrative cancellation proceedings in two European countries alleging non-use by theEuropean company of its trademark. After the court case went to appeal, the parties settled their dispute byconcluding a trademark coexistence agreement which included a WIPO expedited arbitration clause. Whenthe European company used its trademark in a trade fair, the Asian company initiated WIPO expedited arbi-tration proceedings claiming infringement of the coexistence agreement.

Following consultations between the parties and the Center, a European trademark specialist was appointedas sole arbitrator. After two rounds of pleadings, the arbitrator conducted a one-day hearing and issued anaward six months after the commencement of the proceedings. Finding partial infringement of the coexis-tence agreement, the arbitrator granted the primary remedy claimed and ordered the European company torefrain from such infringing behavior.

WIPO EXPEDITED ARBITRATION

Expedited Arbitration Rules.The WIPO ExpeditedArbitration Rules condensethe principal stages of aWIPO arbitration describedabove, allowing theprocedure to be conductedin a shortened time frameand at reduced cost.Notably, there is, inprinciple, only one exchangeof pleadings. There normallyis a sole arbitrator, thusavoiding the potentiallymore lengthy appointmentand decision-makingprocess of three-membertribunals. Proceedingsshould be declared closedwithin three months, asopposed to nine months, ofeither the delivery of theStatement of Defense or theestablishment of thetribunal.

WIPO expedited arbitrationis particularly appropriatewhere the value in disputedoes not justify the cost ofmore extensive litigation or

arbitration procedures, orwhere parties urgently needa final and enforceabledecision on a limitednumber of issues. WIPOexpedited arbitrationproceedings have beenconcluded with a finalaward in as little as fiveweeks. Expedited arbitrationmay be less suited forcomplex disputes that arelikely to require extensiveproduction of evidence,expert analysis or lengthyhearings.

Since the complexity of anarbitration can be hard topredict, it is important thatexpedited proceedingsremain sufficiently flexible toensure a full hearing ofcomplex cases. Whileexpedition is desirable, dueprocess is paramount. TheWIPO Expedited ArbitrationRules do not depart fromthe general principle,enshrined in Article 32(b),that each party must be

given a fair opportunity topresent its case. Hence,where necessary inexceptional cases, thetribunal has authority toextend deadlines, to acceptor request additional writtensubmissions, or to holdlonger hearings, while at thesame time taking account ofthe fact that the partieshave, in principle, opted foran expedited framework.

20

21http://www.wipo.int/amc •

PROCEDURAL STAGE

REQUEST FOR

ARBITRATION

ANSWER TO THE

REQUEST

ARBITRAL TRIBUNAL

STATEMENT OF CLAIM

STATEMENT OF

DEFENSE (INCLUDING

COUNTERCLAIM)REPLY TO COUNTER-CLAIM (IF ANY)HEARINGS

CLOSURE OF

PROCEEDINGS

FINAL AWARD

FEES

WIPO ARBITRATION

May be accompanied by Statement ofClaimWithin 30 days of receipt of Requestfor Arbitration

One or three arbitratorsWithin 30 days of notification ofestablishment of tribunal

Within 30 days of notification ofestablishment of tribunal or Statementof Claim (whichever is later)Within 30 days of receipt of Statementof Defense Date, time and place to be set bytribunalWithin 9 months of Statement ofDefense or establishment of tribunal(whichever is later)Within 3 months of closure ofproceedingsFixed by Center in consultation withparties and tribunal

WIPO EXPEDITED ARBITRATION

Must be accompanied by Statementof ClaimWithin 20 days of receipt of Requestfor Arbitration;Must be accompanied by Statementof DefenseOne arbitratorMust accompany Request forArbitration

Must accompany Answer to theRequest for Arbitration

Within 20 days of receipt of Statementof Defense Within 30 days of receipt of Answerto the Request for ArbitrationWithin 3 months of Statement ofDefense or establishment of tribunal(whichever is later)Within 1 month of closure ofproceedingsFixed if amount in dispute is underUS$ 10 million

The Language Used in the Arbitration

The parties may decide the language of the arbitration. If they do not, under the WIPO Arbitration Rules,the language of the arbitration is that of the arbitration agreement, subject to the tribunal’s power todetermine otherwise having regard to observations of the parties and the circumstances of the case. Thetribunal may order that documents submitted in languages other than that of the arbitration be accom-panied by a translation into the language of the arbitration. (Article 40)

WIPO ARBITRATION AND EXPEDITED ARBITRATIONCOMPARED

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Given the broad authorityof arbitrators, the choiceand appointment of thetribunal is probably thesingle most determinativestep in an arbitration.Parties should, therefore, beable to exert as muchinfluence as possible on theestablishment of thetribunal. At the same time,the appointment processshould not give anuncooperative party theopportunity to obstruct thearbitration proceedings. Theprovisions on the composi-tion and establishment ofthe tribunal in the WIPOArbitration Rules (Articles 14to 36) strike a balancebetween efficiency andparty autonomy.

Parties can agree on suchissues as

> the appointmentprocedure,

> the number ofarbitrators to beappointed,

> any requiredqualifications of thearbitrators, includingtheir nationality,

> the person(s) to beappointed as arbitrators(regardless of whetherthey are on the WIPOList of Arbitrators or not).

Only where the parties failto reach an agreementwithin a certain deadlinewill the Center step in andmake the necessarydetermination by default, asfollows:

> Number of ArbitratorsIf the parties have notagreed on the numberof arbitrators, thetribunal shall generallyconsist of a solearbitrator, unless theCenter decides in

exceptional cases that athree-member tribunal iswarranted (Article14(b)). Under the WIPOExpedited ArbitrationRules (Article 14(a)), thetribunal is alwayscomposed of a solearbitrator.

> Appointment of SoleArbitrator Appointment will bemade in accordancewith the list proceduredescribed in Article 19of the WIPO ArbitrationRules (see page 23).Under the WIPOExpedited ArbitrationRules, Article 14(b), inthe absence of party

HOW ARE WIPO ARBITRATORS APPOINTED?

Claimant appoints one arbitrator in its Request for Arbitration

(Article 17(b))

Respondent appoints one arbitrator (Article 17(b))

Presiding arbitrator appointed bythe two party-appointed arbitrators

(Article 17(b))

Default Appointment by the WIPOCenter through List Procedure(Articles 17(d), 19(a), (b) and (c))

30 days

20 days

if not

if not

if not

23http://www.wipo.int/amc •

appointment of thearbitrator within 15 daysof the commencementof the arbitration, theCenter will appoint thesole arbitrator directly.

> Appointment of Three-Member Tribunal If the parties have notagreed on anappointment procedure(or on all threearbitrators to be

appointed), a two-stepprocess will be followed:

First, each party isrequired to appoint onearbitrator (Article 17(b)). Ifeither party fails to do so,the Center will directlymake that appointment(Articles 17(d) and 19(a)).The two arbitrators thusappointed shall jointlyappoint the presidingarbitrator. If the presiding

arbitrator is notappointed within 20days, appointment will bemade in accordance with the list procedure(Article 17(b), (c)). Article18 contains specialappointment provisionsfor cases involvingmultiple claimants orrespondents.

The Center sends a shortlist ofpotential candidates to each party,with detailed profiles setting out their

qualifications.

Each party may delete names ofcandidates it objects to and rank theremaining candidates in the order of

preference.

The rankings must be returned to theCenter within 20 days, failing whichall candidates are deemed acceptable.

The Center makes the appointmentfrom the shortlist, taking into accountthe preferences and objectionsexpressed by the parties.

If no candidate is acceptable to bothparties, or if no acceptable candidate isavailable, the Center makes the

appointment from outside the shortlist.

APPOINTMENT OF ARBITRATORS THROUGHTHE LIST PROCEDURE

The list procedure describedin Article 19 of the WIPOArbitration Rules combinesparty input with efficiencyand safeguards againstrecalcitrance andbreakdowns in theappointment process. Underthe WIPO ExpeditedArbitration Rules, there is no

list procedure and in theabsence of party agreement,the Center directly appointsthe sole arbitrator. Theparties may, however,request the list procedure ifthey so wish.

24

Who Are the WIPO Arbitrators?

The success of an arbitration depends to a large extent on the quality of the arbitrator(s). In the case of IPor technology disputes, the challenge lies in finding candidates who combine arbitration skills and experi-ence with specialized knowledge of the disputed subject matter. The Center has invested considerableeffort in identifying potential arbitrators with first-hand knowledge of the various legal, technical and busi-ness areas typically involved in IP, technology or entertainment disputes.

The Center keeps detailed profiles containing extensive information on each candidate’s qualifications,including professional experience in dispute resolution and IP. Where necessary in individual cases, theCenter will use its worldwide contacts to identify additional candidates with the required background.

Typically, in order to avoiddeadlocks, the arbitraltribunal will consist of eitherone or three arbitrators.When deciding betweenthese two options, partieswill have to weighconsiderations of cost andefficiency against theweight and complexity ofthe dispute.

Parties may feel that thefinality of awards calls formore than one decisionmaker. A three-membertribunal may more easilybridge potential differencesin the legal, cultural andeconomic backgrounds ofthe parties since each canselect an arbitrator from asimilar background.

Moreover, complex casesmay benefit from thegreater variety ofperspectives, experience andqualifications present on thetribunal.

On the other hand, reasonsof efficiency may call for asole arbitrator: fees andexpenses will invariably belower, meetings and hearingcan be scheduled moreeasily, and the decision-making process should beshorter. In many cases, asole arbitrator will beentirely adequate to dealwith the dispute, especiallywhere the arbitrator isexperienced and familiarwith the subject matter tobe arbitrated.

HOW MANY ARBITRATORS SHOULD BE APPOINTED?

Where the parties have notdetermined the number ofarbitrators, the WIPOArbitration Rules providethat the tribunal shallconsist of a sole arbitrator,except where the Centerdetermines that, in view ofall the circumstances of thecase, a three-membertribunal is warranted (Article14(b)). Under the WIPOExpedited Arbitration Rules,Article 14(a), there shallalways be a sole arbitrator.

As indicated in the diagramincluded in the introductorysection, 10% of the casesadministered by the WIPOCenter follow the WIPOExpedited Arbitrationprocedure and, as a result, a

25http://www.wipo.int/amc •

sole arbitrator is appointedin those cases. Out of thecases under the WIPOArbitration Rules, the partiesagreed to appoint a sole

arbitrator in 71% of caseswhereas the appointmentof a three-member ArbitralTribunal had been agreed inthe remaining 29% of cases.

HOW IS THE IMPARTIALITY AND INDEPENDENCE OFWIPO ARBITRATORS SAFEGUARDED?

The Center places greatvalue on the professionalintegrity of its arbitrators.Under the WIPO ArbitrationRules, Article 22, eacharbitrator, including anyparty-appointed arbitrator, isrequired to be impartial andindependent. Bothstandards are related andaim to ensure that thedispute is decidedobjectively on the basis ofthe arguments and evidencesubmitted. Independencemeans that the arbitratorhas no relationship with aparty, financial or otherwise,that might influence his orher assessment of thedispute. Impartiality requiresabsence of bias in favor ofor against any of the parties,or in relation to the issues indispute.

A prospective arbitratormust, before acceptingappointment, disclose anymatter that might give theappearance of partiality orlack of independence, andthis duty continuesthroughout the course ofthe arbitration. Beforeappointing an arbitrator, theCenter requires adeclaration disclosing anycircumstances that mightcast doubt on thecandidate’s impartiality orindependence, orconfirming that no suchcircumstances exist.

If circumstances arise thatgive rise to justifiable doubtsas to an arbitrator’simpartiality orindependence, either party

may challenge the arbitratorat any time during theprocedure. To avoidobstruction, a party whichhas appointed the arbitratoror concurred in thearbitrator’s appointment canonly bring a challenge forreasons of which the partyhas become aware after theappointment (Article 24).Challenges are decidedupon by the Center. Whereboth parties agree on thechallenge or the concernedarbitrator withdrawsvoluntarily, the latter isreplaced without implicationthat the grounds for thechallenge are valid.

26

The powers of an arbitraltribunal are those which theparties have conferred to itin the arbitration clause andrules. The parties expect thetribunal to render acomprehensive, final andenforceable decision of thedispute, and to do so fairlyand efficiently. Article 38 ofthe WIPO Arbitration Rulesauthorizes the tribunal to“conduct the arbitration insuch manner as it considersappropriate.” This wideauthority is subject to Article3 of the WIPO ArbitrationRules which provides thatthe arbitration shall beconducted in accordancewith the WIPO ArbitrationRules, in the form adoptedby the parties, and themandatory provisions of thearbitral law. This is importantwith a view to theenforceability of the award.

Article 38(b) and (c) of theWIPO Arbitration Rulesprovides guidelines for theexercise of the tribunal’s

authority. The tribunal mustrespect due process andensure each party is given afair opportunity to presentits case, leading to anenforceable award. At thesame time, the tribunalshould ensure that thearbitral procedure takesplace with due expedition.For example, it shouldextend deadlines only inexceptional cases.

Certain powers of thetribunal are explicitly listed inthe WIPO Arbitration Rules:

> to hear and determineobjections to its ownjurisdiction, and todetermine the existenceor validity of any contractof which the arbitrationagreement forms part(Article 36(a) and (b))

> to determine thelanguage of thearbitration in theabsence of partyagreement (Article 40)

> to determine theapplicable substantivelaw in the absence ofparty agreement (Article59(a))

> to set the schedule ofthe proceedings, toextend deadlines (Article38(c)), to allow orrequire further writtenstatements (Article 43),to accept amendmentsto claims or defenses(Article 44), to organizea preparatoryconference (Article 47)

> to order interimmeasures of protectionand security for claimsand costs (Article 46)

> to determine theadmissibility andrelevance of evidence,and to order a party toproduce certaindocuments or otherpieces of evidence underits control (Article 48)

WHAT ARE THE POWERS OF THE TRIBUNAL?

27http://www.wipo.int/amc •

> to order site visits andinspections (Article 50)

> to classify certaininformation asconfidential and toorder protectivemeasures (Article 52)

> to hold hearings (Article53), and to decide upontheir venue (Article 39(b))

> to supervise witnessevidence (Article 54),and to appoint experts(Article 55)

> to close and to reopenthe proceedings (Article57)

> to render a final bindingaward (Articles 59 etseq.)

WIPO Center Web Site and Publications

The Center’s web site contains the WIPO Rules and Clauses in different languages, as well as guides andmodels for the procedures administered by the Center. It also offers up-to-date information on the Center’sactivities. Other features include the full text of all domain name decisions rendered by WIPO panelists as

well as a searchable legal index to such decisions.Interested parties can use the web site to registerfor Center events or to subscribe to the Center’selectronic newsletters. The Center’s site, whichalso includes full contact details of its staff, maybe accessed at http://www.wipo.int/amc.

In addition, it is possible to order publications aboutthe Center, its services, and IP ADR, including moredetailed explanations of WIPO arbitration as well asa Guide to WIPO Mediation. These are listed athttp://www.wipo.int/amc/en/publications/.

28

The tribunal determines theadmissibility, relevance,materiality and weight ofevidence before it; it is notbound by any rules ofevidence, unless the partieshave expressly providedotherwise (Article 48).

The WIPO Arbitration Rulesdo not provide for automaticdiscovery of evidence. Theavailability and extent ofdiscovery is entirely in thehands of the tribunal if theparties have not agreedotherwise. Pursuant toArticle 48(b), the tribunalmay, at the request of aparty or on its own motion,order a party to produceevidence under its controlwhere the tribunal considersthis to be “necessary orappropriate.” If the partyfails to comply with such anorder without showing goodcause, the tribunal may drawadverse inferences therefrom(Article 56(d)).

In order to facilitate thetaking of technical evidence,the WIPO Arbitration Rulesinclude specific provisions on

certain types of evidence,such as experiments (Article49), site visits (Article 50), oragreed primers and models(Article 51). The WIPOArbitration Rules alsospecifically address theprotection of trade secrets orother confidentialinformation (see page 29).

Article 54 of the WIPOArbitration Rules deals withwitnesses. It specifies thatthe tribunal may ask theparties to provide a witnesslist setting out the witnesseseach party wishes to call aswell as the nature andrelevance of their testimony.It grants the tribunal theauthority to refuse or limitthe appearance of individualwitnesses on the grounds ofredundance and irrelevance.At the hearing, witnessesmay be questioned by thetribunal as well as, underthe tribunal’s control, byeach party. At the discretionof the party relying on thewitness or as directed bythe tribunal, parties mayalso submit written witnessstatements. In this case, the

tribunal may request suchwitnesses to be madeavailable for oral testimony,in particular for cross-examination.

Since the dispute mayconcern matters of aspecialist or technical naturefor which the tribunal lacksthe required expertise,Article 55 of the WIPOArbitration Rules gives thetribunal authority, inconsultation with the parties,to appoint one or moreexperts to report on specificissues. Unless the partieshave agreed otherwise, suchreports will not be bindingon the tribunal. The partieswill be given an opportunityto comment on the reportand, on their request, toquestion the expert, subjectto any confidentialityprotection provided underArticle 52 of the WIPOArbitration Rules (see page 29).

EVIDENCE IN WIPO ARBITRATION PROCEEDINGS

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Confidentiality is easier tomaintain in a privateprocedure, such as arbitration,than in litigation in a publiccourt. Although claimantsmay sometimes have an interest in obtaining apublished judgment - becauseof its deterrent effect or inorder to set a precedent - in many cases parties willprefer to settle their disputein private. This can beparticularly important in IPand technology disputes.

The WIPO Rules offer acomprehensive and balancedtreatment of all aspects ofconfidentiality, including:

> the existence of thearbitration as such,

> any disclosures madeduring the arbitration,and

> the award.

The confidentiality provisionsof the WIPO Rules arebinding on the parties byvirtue of the arbitrationagreement, on the arbitratorby virtue of his or her

appointment under thoseRules, and on the Center asdesignated administeringauthority. Third parties, suchas witnesses, experts, or theconfidentiality advisorprovided for in Article 52 ofthe WIPO Arbitration Rules,will have to sign a separateconfidentiality undertaking.

Article 76 requires the Centerand the arbitrators to keepthe existence of thearbitration, any disclosuresmade during the arbitration,and the award confidential.They may disclose any ofthese aspects only:

> with the consent of theparties,

> to the extent disclosure isnecessary in connectionwith a court actionrelating to the award, or

> if disclosure is otherwiserequired by law.

Confidentiality of theExistence of the ArbitrationArticle 73 of the WIPOArbitration Rules requires theparties to keep the existence

of the arbitration confidential,i.e. not to disclose informationregarding the parties and thedisputed subject matter.Disclosure is permitted only:

> with the other party’sconsent,

> to the extent it isnecessary in connectionwith a court challenge tothe arbitration or anaction for enforcementof an award,

> to the extent it isrequired by law or by acompetent regulatorybody (provided that thedisclosing party informsthe other party and, ifthe arbitration is stillpending, the tribunal), or

> for the purpose ofsatisfying a duty of goodfaith or candor (e.g. inthe context of a jointventure, a merger or anacquisition).

Confidentiality of DisclosuresMade During the ArbitrationPursuant to Article 74 of theWIPO Arbitration Rules, noparty may use or reveal to a

HOW IS CONFIDENTIALITY MAINTAINEDIN A WIPO ARBITRATION?

30

third party information that ithas gained access to only byvirtue of its participation in thearbitration proceeding, except:

> with the other party’sconsent,

> pursuant to an order of acompetent court, or

> to the extent it isnecessary to prepare awitness for testimony(subject to appropriateconfidentiality safeguards).

Confidentiality of the AwardArticle 75 requires parties tokeep the arbitral awardconfidential. The award maybe disclosed only:

> with the other party’sconsent,

> if the award has fallen inthe public domain as aresult of an action beforea court or othercompetent authority, or

> if disclosure is legallyrequired or necessary toprotect a party’s legalrights.

Disclosure of Trade Secretsand Other ConfidentialInformationIP and technology disputesoften turn on sensitivetechnical or businessinformation. Article 52 of theWIPO Arbitration Rulesprovides a special protectionmechanism for trade secretsand other confidentialinformation during thearbitration proceeding:

> A party may make asubstantiated applicationto the tribunal thatcertain information whichit is required to, orintends to, submit in thearbitration be classified asconfidential.

> If the tribunal finds thatdisclosure, to the otherparty or even to thetribunal itself, is likely tocause serious harm, it mayclassify the informationas confidential and orderappropriate protectionmechanisms.

> In exceptionalcircumstances, the tribunalmay, on request of a party

or on its own motion,designate a confidentialityadvisor to make thesedeterminations.

The tribunal may alsoappoint the confidentialityadvisor as an expert in orderto report on specific issues onthe basis of the confidentialinformation without disclosingthis information to the partiesor to the tribunal. However,in view of the obligation ofthe tribunal to respect dueprocess, this procedure wouldnormally be limited to factswhich, while being highlysensitive, are only of secondaryimportance for the subjectmatter in dispute. Similarly,the terms of reference for theconfidentiality advisor shouldbe as clearly circumscribed aspossible, and the tribunalshould, when weighing theevidence, take account of thefact that access to theinformation in question waslimited and not subject toexamination by the otherparty or the tribunal.

31http://www.wipo.int/amc •

WIPO Arbitration Workshops

The WIPO Arbitration Workshops are designed for lawyers, patent and trademark attorneys and others wishingto familiarize themselves with the international arbitration process and to receive training as arbitrators or partyrepresentatives. The Workshop is organized once a year and provides practical instruction in international com-mercial arbitration law and practice, with particular emphasis on the conduct of arbitration proceedings underthe WIPO Arbitration and Expedited Arbitration Rules. The faculty consists of leading international arbitratorswith experience in WIPO cases. Program and registration information is made available on the Center’s web site.

Article 52 of the WIPOArbitration Rules (Article 46,WIPO Expedited ArbitrationRules) provides a procedurewhereby a party can apply tothe Arbitral Tribunal in orderto obtain a determinationthat certain informationwhich it wishes or is requiredto submit in the arbitrationshall be classified asconfidential. This procedurehas been used by parties in

WIPO arbitration who haveobtained such protectiveorders from the ArbitralTribunal in situations in whicha party objected to thedisclosure of trade secrets toa competitor. In suchsituations the ArbitralTribunal limited access to thatconfidential information tothe lawyers of the partyalleged of being acompetitor.

The WIPO Center’sexperience in the applicationof the confidentialityprovisions of the WIPOArbitration Rules shows thatthese provisions aresufficiently flexible to preventthe risk of public disclosureof sensitive informationinvolved in many intellectualproperty and technologyrelated disputes.

32

The availability of interimrelief can be important in IPor technology disputes. InArticle 46, the WIPOArbitration Rules providetwo options for obtainingsuch measures. A party mayrequest interim relief

> from the tribunal itself,or

> from courts in thecountry or countrieswhere the need forinterim relief arises.

The advantage of requestinginterim relief from thetribunal is that such reliefcan be obtained “centrally”in one neutral andconfidential forum. Underthe WIPO Rules, the tribunalhas wide authority to “issueany provisional orders ortake other interim measures

it deems necessary” at therequest of a party. Theprovision explicitly mentions“injunctions and measuresfor the conservation ofgoods” without limiting thetribunal to such measures.The tribunal may require therequesting party to furnishappropriate security as acondition for granting theinterim relief. The securitymay be required to coverthe interim relief itself aswell as any resultingdamage to the other party.

The requested relief may begranted in the form of aninterim award which, inmany jurisdictions, enjoys ahigher degree ofenforceability. In most caseshowever, parties will complywith the tribunal’s directionsvoluntarily. In addition, the

tribunal may, whenrendering the final award,draw adverse inferencesfrom a party’s non-compliance with anytribunal order.

In some situations, interimrelief from an arbitraltribunal may not be availableor sufficient. This may bethe case where the need forinterim relief arises beforethe tribunal has beenconstituted, or where suchrelief involves third partiesnot subject to the tribunal’sauthority. The WIPO Rulestherefore state that a partyhas the right to requestinterim relief from a nationalcourt at any time and thatsuch requests shall not bedeemed incompatible withthe arbitration agreement.

IS INTERIM RELIEF AVAILABLE?

Case example: A WIPO Arbitration of an IT/Telecom Dispute

In a WIPO arbitration involving a dispute under a joint venture and software license agreement, after theappointment of the sole Arbitrator, the Claimant obtained from a national court in a European jurisdictionthe attachment of the Respondent’s bank account pursuant to Article 46(d) of the WIPO Arbitration Rules.Following a request from the Respondent, the sole Arbitrator issued a procedural order requesting theClaimant to provide a bank guarantee in order to secure payment of the Respondent’s counter-claim pur-suant to Article 46(b) of the WIPO Rules. The Claimant provided the bank guarantee as ordered.

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Orders and AwardsDecisions of an arbitraltribunal are typically takenin the form of orders orawards. Awards arerendered to finally disposeof one or more of the issuesthat were submitted toarbitration with bindingeffect on the partiesinvolved (res judicata).Orders typically concernprocedural matters whichare of limited relevancebeyond the arbitration itself,such as the decision to setor to extend a deadline, toorder payment of a deposit,or to appoint an expert.Orders may, however,extend to substantive issues.A tribunal may, for example,issue interim measures ofprotection in the form of anorder (Article 46), or it mayorder the termination of thearbitration (Article 65(c)).

The main differencebetween orders and awardslies in their enforcement.Only arbitral awards benefitfrom facilitated recognitionand enforcementmechanisms under arbitral

law or the New YorkConvention (see page 35),whereas non-compliancewith an order is typicallyaddressed by the tribunalitself, for example bydrawing negative inferencesfrom non-compliance(Article 56(d)) or by orderinga party to bear theadditional costs caused byits non-compliance.

Types of AwardsArticle 62(a) of the WIPOArbitration Rules providesthat the tribunal may render“preliminary, interim,interlocutory, partial or finalawards.” A final awardsettles all of the issues thatwere submitted to arbitrationwith the consequence thatthe tribunal ceases to havejurisdiction over the dispute,except for the purpose ofcorrecting errors orsupplementing the awardwithin a limited time (Article 66).

Preliminary, interim,interlocutory or partialawards determine one ormore matters that can be

decided during the course ofthe proceeding withoutfinally and completelydisposing of the dispute.Such determinations settleparticular issues and allowthe tribunal and the partiesto turn their attention to theremainder of the dispute.Examples are decisions on:

> the jurisdiction of thetribunal or the validity ofthe arbitration agreement,if contested by a party,

> interim measures ofprotection,

> security for the claimand for the costs of thearbitration,

> liability, before theamount of damages isdetermined,

> an order for specificperformance, whileretaining authority toaward damages in caseof non-compliance.

Parties who have reached asettlement in the course ofan arbitration may wish tohave the terms of theirsettlement confirmed in theform of a consent award,

WHAT TYPES OF DECISIONS CAN AN ARBITRALTRIBUNAL TAKE?

34

which will be easier toenforce than a merecontract between theparties. This option isexpressly recognized inArticle 65 of the WIPOArbitration Rules.

RemediesAs a general matter, if theyhave not providedotherwise, the parties canbe assumed to have giventhe tribunal authority toorder any suitable remedyto finally dispose of thedispute. Typically, however,the tribunal can only grantthe remedies that areprovided for under the law

applicable to the substanceof the dispute. In addition,the tribunal should takeaccount of any mandatoryprovisions of the applicablearbitral law or at any likelyplace of enforcement.

Most awards concern thepayment of money and assuch do not present specialenforcement issues.Available remedies generallyinclude:

> monetarycompensation, includingdamages, interest(Article 60) and costs(Articles 71 and 72),

> injunctions as betweenthe parties, but not withregard to third parties,

> declaratory relief, withbinding effect betweenthe parties,

> specific performance,where available underthe applicablesubstantive law.

Alternatively, thetribunal may render aninterim award orderingspecific performanceand retain the authorityto order damages incase of non-compliance.

Can an Award Be Appealed?

Unless the parties have expressly provided otherwise, an award is final. Such finality is generally perceivedas one of the advantages of arbitration and is also emphasized in Article 64 of the WIPO Arbitration Ruleswhich states that “by agreeing to arbitration under these Rules, the parties undertake to carry out the awardwithout delay, and waive their right to any form of appeal or recourse to a court of law or other judicialauthority, insofar as such waiver may validly be made under the applicable law.”

A party can, however, challenge the award in the courts at the place of arbitration in order to have theaward declared invalid, or “set aside.” Under the arbitral laws of most countries, the grounds for settingaside an award are limited. An appeal on the merits is usually not possible. In most countries, includingthose that have adopted the UNCITRAL Model Law on International Commercial Arbitration (text availableat http://www.uncitral.org), the grounds for setting aside an award are largely the same as the limitedgrounds for refusing enforcement enumerated in Article V of the New York Convention (see page 35).

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Most arbitral awards areimplemented voluntarily.Article 64 of the WIPOArbitration Rules states that“by agreeing to arbitrationunder these Rules, theparties undertake to carryout the award withoutdelay.” Where enforcementproves necessary, partiesneed to have recourse tonational courts in thosecountries where they wishthe award to be enforced. Ifa national court recognizesthe award, it will grant atitle (exequatur) which isenforceable like a finaljudgment rendered by suchcourt.

Recognition andenforcement of domesticawards, i.e. awardsrendered under the arbitrallaw of the country in whichenforcement is sought, issubject to the national lawof the country concerned.For foreign arbitral awards,i.e. awards sought to beenforced in a state otherthan the state of the placeof arbitration, parties can

rely on the uniforminternational legalframework established bythe New York Convention,which has been ratified bymore than 140 statesworldwide. The text of theConvention, as well as a listof its contracting parties, isavailable on the Center’sweb site at http://www.wipo.int/amc/en/arbitration/ny-convention/index.html.

A key feature of arbitralawards is that a court isnormally prevented fromexamining the award as tothe merits. Recognition andenforcement may only berefused on the basis of oneor more of the followinggrounds enumerated inArticle V of the New YorkConvention:

> invalidity of theunderlying arbitrationagreement,

> violations of dueprocess, in particularwhere the losing partywas not given propernotice of the arbitration

or was otherwise unableto present its case,

> the award decides issuesthat are outside thescope of the arbitrationagreement,

> the arbitral tribunal wasconstituted in violationof a provision in thearbitration agreement or,failing such provision, inviolation of a mandatoryprovision of theapplicable arbitral law,

> the award is not yetbinding or has beensuspended or set asideunder the applicablearbitral law (see page 34),

> the subject matter ofthe arbitration is notarbitrable under the lawof the country whereenforcement is sought, or

> the recognition orenforcement of theaward would becontrary to the publicpolicy of the countrywhere enforcement issought.

HOW CAN AN ARBITRAL AWARD BE ENFORCED?

36

The Center believes thatarbitration should be costeffective. A well-managedprocedure can offer costadvantages over courtlitigation.

CostsSince arbitration is a privateprocedure, the parties bearthe costs. These include:

> the fees of the Centerand the arbitrator(s), asexplained below,

> the expenses incurred inthe course of thearbitration (such as thearbitrators’ travelexpenses, costs ofexpert advice or ofmeeting and hearingfacilities), and

> the legal costs and otherexpenses of each party.

In the final award, thetribunal will apportion thesecosts among the parties,including all or part of thereasonable expensesincurred by the other party.In so doing, the tribunal willtake account of allcircumstances of the case,

including the outcome ofthe arbitration (Articles 71and 72).

FeesIn consultation with partiesand arbitrators, the Centerensures that all fees chargedin a WIPO arbitration areappropriate in light of thecircumstances of thedispute. Three types of feesapply in a WIPO arbitrationproceeding:

> the registration fee(Article 67),

> the administration fee(Article 68), and

> the arbitrators’ fees(Article 69).

The Center administersarbitrations on a non-profitbasis. Its fees are thereforecomparatively moderate(see the WIPO Schedule ofFees). Regardless of thevalue in dispute, theregistration fee amounts toUS$ 2,000 in WIPOarbitrations or US$ 1,000 inWIPO expeditedarbitrations. It must first bepaid by the claimant. A

respondent who asserts acounter-claim is required topay a separate registrationfee. If the arbitration followsa WIPO mediation, theCenter may set-off all orpart of the fee it hasreceived in that mediation.

The administration fee mustalso be advanced by theclaimant. A respondentasserting a counter-claim isrequired to pay a separateadministration fee. Theamount of theadministration fee dependson the value in dispute andis calculated within a rangeof lump sums which, in thecase of WIPO expeditedarbitration, are reduced by50%.

The arbitrators’ fees are notdirectly linked to the valueof the case but determinedby the Center, inconsultation with the partiesand the arbitrator(s), on thebasis of hourly rates. Whendetermining these rates, theCenter will take intoconsideration such factorsas the applicable rates at

WHAT DOES WIPO ARBITRATION COST ANDWHO PAYS?

the location of the partiesand the arbitrator(s), therequired qualifications ofthe arbitrator(s), thecomplexity of the case andthe amounts in dispute. Theparties and the arbitrator(s)may also agree to calculatethe fee on a lump-sumbasis. With its established

contacts, the Center willoften be in a position tohelp negotiate favorable feearrangements for theparties. In the case of WIPOexpedited arbitration, theparties normally pay a flatfee where the value of thecase does not exceed US$10 million. Where the value

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in dispute is greater thanthat amount, the feecalculation is the same asthat which applies to astandard WIPO arbitration.

http://www.wipo.int/amc •

Type of Fee

Registration FeeAdministration Fee

Arbitrator(s) Fees

Amount in dispute

Any amountUp to US$2.5mOver US$2.5m and up to US$10mOver US$10m

Up to US$2.5m

Over US$2.5m and upto US$10mOver US$10m

WIPO ExpeditedArbitrationUS$1,000US$1,000US$5,000

US$5,000+0.05% of amountover US$10m up to amaximum fee of US$15,000US$20,000 (fixed fee)US$40,000 (fixed fee)As agreed by theCenter in consultationwith the parties andthe arbitrator

WIPO Arbitration

US$2,000US$2,000US$10,000

US$10,000+0.05% of amountover US$10m up to amaximum fee of US$25,000As agreed by theCenter in consultationwith the parties andthe arbitrator(s)

[Indicative rate(s) US$300 to US$600per hour]

WIPO SCHEDULE OF ARBITRATION FEES

38

The following pages contain recommended contract clauses (for the submission of future disputes

under a particular contract) and submission agreements (for the submission of an existing dispute)

for the procedures administered by the WIPO Arbitration and Mediation Center. (The diagram on

page 3 of this booklet provides a graphic outline of these procedures.)

Mediation

Arbitration

Expedited Arbitration

Expert Determination

Mediation Followed, in the Absence of a Settlement, by [Expedited] Arbitration

Mediation Followed, in the Absence of a Settlement, by Expert Determination

Expert Determination, Binding Unless Followed by [Expedited] Arbitration

FUTURE DISPUTES

Mediation

“Any dispute, controversy or claim arising under, out of or relating to this contract and any

subsequent amendments 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 in accordance with the WIPO Mediation Rules. The place

of mediation shall be [specify place]. The language to be used in the mediation shall be [specify

language].”

Arbitration

“Any dispute, controversy or claim arising under, out of or relating to this contract and any

subsequent amendments of this contract, including, without limitation, its formation, validity,

binding effect, interpretation, performance, breach or termination, as well as non-contractual

claims, shall be referred to and finally determined by arbitration in accordance with the WIPO

Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators][a sole arbitrator].

The place of arbitration shall be [specify place]. The language to be used in the arbitral

proceedings shall be [specify language]. The dispute, controversy or claim shall be decided

in accordance with the law of [specify jurisdiction].”

RECOMMENDED WIPO CONTRACT CLAUSES ANDSUBMISSION AGREEMENTS

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Expedited Arbitration

“Any dispute, controversy or claim arising under, out of or relating to this contract and any

subsequent amendments of this contract, including, without limitation, its formation, validity,

binding effect, interpretation, performance, breach or termination, as well as non-contractual

claims, shall be referred to and finally determined by arbitration in accordance with the WIPO

Expedited Arbitration Rules. The place of arbitration shall be [specify place]. The language to be

used in the arbitral proceedings shall be [specify language]. The dispute, controversy or claim

shall be decided in accordance with the law of [specify jurisdiction].”

Expert Determination

“Any dispute or difference between the parties arising under, out of or relating to [describe scope

of the matter referred to expert determination] under this contract and any subsequent

amendments of this contract shall be referred to expert determination in accordance with the

WIPO Expert Determination Rules. The determination made by the expert shall [not] be binding

upon the parties. The language to be used in the expert determination shall be [specify

language].”

Mediation Followed, in the Absence of a Settlement, by [Expedited] Arbitration

“Any dispute, controversy or claim arising under, out of or relating to this contract and any

subsequent amendments 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 in accordance with the WIPO Mediation Rules. The place

of mediation shall be [specify place]. The language to be used in the mediation shall be [specify

language].

If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to

the mediation within [60][90] days of the commencement of the mediation, it shall, upon the

filing of a Request for Arbitration by either party, be referred to and finally determined by

arbitration in accordance with the WIPO [Expedited] Arbitration Rules. Alternatively, if, before the

expiration of the said period of [60][90] days, either party fails to participate or to continue to

participate in the mediation, the dispute, controversy or claim shall, upon the filing of a Request

for Arbitration by the other party, be referred to and finally determined by arbitration in

40

accordance with the WIPO [Expedited] Arbitration Rules. [The arbitral tribunal shall consist of

[a sole arbitrator][three arbitrators].]* The place of arbitration shall be [specify place]. The

language to be used in the arbitral proceedings shall be [specify language]. The dispute,

controversy or claim referred to arbitration shall be decided in accordance with the law of [specify

jurisdiction]." (* The WIPO Expedited Arbitration Rules provide that the arbitral tribunal shall

consist of a sole arbitrator.)

Mediation Followed, in the Absence of a Settlement, by Expert Determination

“Any dispute or difference between the parties arising under, out of or relating to [describe scope

of the matter referred to expert determination] under this contract and any subsequent

amendments of this contract shall be submitted to mediation in accordance with the WIPO

Mediation Rules. The place of mediation shall be [specify place]. The language to be used in the

mediation shall be [specify language].

If, and to the extent that, any such dispute or difference has not been settled pursuant to the

mediation within [60][90] days of the commencement of the mediation, it shall, upon the filing of

a Request for Expert Determination by either party, be referred to expert determination in

accordance with the WIPO Expert Determination Rules. Alternatively, if, before the expiration of

the said period of [60][90] days, either party fails to participate or to continue to participate in the

mediation, the dispute or difference shall, upon the filing of a Request for Expert Determination

by the other party, be referred to expert determination in accordance with the WIPO Expert

Determination Rules. The determination made by the expert shall [not] be binding upon the

parties. The language to be used in the expert determination shall be [specify language].”

Expert Determination, Binding Unless Followed by [Expedited] Arbitration

“Any dispute or difference between the parties arising under, out of or relating to [describe scope

of the matter referred to expert determination] under this contract and any subsequent

amendments of this contract shall be referred to expert determination in accordance with the

WIPO Expert Determination Rules. The language to be used in the expert determination shall be

[specify language].

The determination made by the expert shall be binding upon the parties, unless within [30] days

of the communication of the determination, the matter referred to expert determination is, upon

the filing of a Request for Arbitration by either party, referred to and finally determined by

arbitration in accordance with the WIPO [Expedited] Arbitration Rules. [The arbitral tribunal shall

consist of [a sole arbitrator][three arbitrators].] * The place of arbitration shall be [specify place].

The language to be used in the arbitral proceedings shall be [specify language]. The dispute or

difference referred to arbitration shall be decided in accordance with the law of [specify

jurisdiction].” (* The WIPO Expedited Arbitration Rules provide that the arbitral tribunal shall

consist of a sole arbitrator.)

EXISTING DISPUTES

Mediation

"We, the undersigned parties, hereby agree to submit to mediation in accordance with the WIPO

Mediation Rules the following dispute:

[brief description of the dispute]

The place of mediation shall be [specify place]. The language to be used in the mediation shall be

[specify language]."

Arbitration

"We, the undersigned parties, hereby agree that the following dispute shall be referred to and

finally determined by arbitration in accordance with the WIPO Arbitration Rules:

[brief description of the dispute]

The arbitral tribunal shall consist of [three arbitrators][a sole arbitrator]. The place of arbitration

shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify

language]. The dispute shall be decided in accordance with the law of [specify jurisdiction]."

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Expedited Arbitration

"We, the undersigned parties, hereby agree that the following dispute shall be referred to and

finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules:

[brief description of the dispute]

The place of arbitration shall be [specify place]. The language to be used in the arbitral

proceedings shall be [specify language]. The dispute shall be decided in accordance with the law

of [specify jurisdiction]."

Expert Determination

“We, the undersigned parties, hereby agree to submit to expert determination in accordance with

the WIPO Expert Determination Rules the following matter:

[brief description of the matter referred to expert determination]

The determination made by the expert shall [not] be binding upon the parties. The language to

be used in the expert determination shall be [specify language].”

Mediation Followed, in the Absence of a Settlement, by [Expedited] Arbitration

"We, the undersigned parties, hereby agree to submit to mediation in accordance with the WIPO

Mediation Rules the following dispute:

[brief description of the dispute]

The place of mediation shall be [specify place]. The language to be used in the mediation shall be

[specify language].

We further agree that, if, and to the extent that, the dispute has not been settled pursuant to the

mediation within [60][90] days of the commencement of the mediation, it shall, upon the filing of

a Request for Arbitration by either party, be referred to and finally determined by arbitration in

accordance with the WIPO [Expedited] Arbitration Rules. Alternatively, if, before the expiration of

42

the said period of [60][90] days, either party fails to participate or to continue to participate in the

mediation, the dispute shall, upon the filing of a Request for Arbitration by the other party, be

referred to and finally determined by arbitration in accordance with the WIPO [Expedited]

Arbitration Rules. [The arbitral tribunal shall consist of [a sole arbitrator][three arbitrators].]* The

place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings

shall be [specify language]. The dispute referred to arbitration shall be decided in accordance with

the law of [specify jurisdiction]." (* The WIPO Expedited Arbitration Rules provide that the arbitral

tribunal shall consist of a sole arbitrator.)

Mediation Followed, in the Absence of a Settlement, by Expert Determination

“We, the undersigned parties, hereby agree to submit to mediation in accordance with the WIPO

Mediation Rules the following matter:

[brief description of the dispute or difference between the parties]

The place of mediation shall be [specify place]. The language to be used in the mediation shall be

[specify language].

We further agree that, if, and to the extent that, any such matter has not been settled pursuant

to the mediation within [60][90] days of the commencement of the mediation, it shall, upon the

filing of a Request for Expert Determination by either party, be referred to expert determination in

accordance with the WIPO Expert Determination Rules. Alternatively, if, before the expiration of

the said period of [60][90] days, either party fails to participate or to continue to participate in the

mediation, the dispute or difference shall, upon the filing of a Request for Expert Determination

by the other party, be referred to expert determination in accordance with the WIPO Expert

Determination Rules. The determination made by the expert shall [not] be binding upon the

parties. The language to be used in the expert determination shall be [specify language].”

Expert Determination, Binding Unless Followed by [Expedited] Arbitration

“We, the undersigned parties, hereby agree to submit to expert determination in accordance with

the WIPO Expert Determination Rules the following matter: [brief description of the matter

referred to expert determination]

43http://www.wipo.int/amc •

The language to be used in the expert determination shall be [specify language].

We further agree that the determination made by the expert shall be binding upon the parties,

unless within [30] days of the communication of the determination, the matter referred to expert

determination is, upon the filing of a Request for Arbitration by either party, referred to and finally

determined by arbitration in accordance with the WIPO [Expedited] Arbitration Rules. [The arbitral

tribunal shall consist of [a sole arbitrator][three arbitrators].] * The place of arbitration shall be

[specify place]. The language to be used in the arbitral proceedings shall be [specify language].

The dispute or difference referred to arbitration shall be decided in accordance with the law of

[specify jurisdiction].” (* The WIPO Expedited Arbitration Rules provide that the arbitral tribunal

shall consist of a sole arbitrator.)

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For more information contact theWorld Intellectual Property Organization (WIPO)Arbitration and Mediation Center

Address :34, chemin des Colombettes P.O. Box 18CH-1211 Geneva 20 Switzerland

Telephone :+41 22 338 82 47

Fax :+41 22 740 37 00

Email :[email protected]

Website :www.wipo.int/amc

For any other enquiry contact WIPO at : www.wipo.int/contact

WIPO Publication No. 919E ISBN: 978-92-805-1815-3