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N. 42, April - June 2009
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Mediation in Research & Development projects – the
WIPO Arbitration and Mediation Center1
Judith Schallnau
WIPO Arbitration and Mediation Center
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Alternative Dispute Resolution (ADR), especially mediation, has
enjoyed particular attention in the recent past. Following long-standing
discussions starting with the Vienna Action Plan in 1998, Directive 2008/52/EC
on certain aspects of mediation in civil and commercial matters was adopted in
May 2008 and its provisions will have to be implemented by the EU Member States
by May 2011.
At the same time, innovation through cooperation in science and
technology with international key partners plays an increasingly important role
to overcome economic difficulties worldwide. This is foreseen in the Seventh
Framework Programme (FP7) and is reflected in the “wide opening of the
[European Research Area] ERA to the world” announced in the Ljubljana
process2 and, among other
documents, the European Commission Communication on the strategic European
Framework for International Science and Technology Cooperation3 published in September 2008.
Given such growing use and awareness of mediation, the
internationalisation of research projects fostered by the above-mentioned
developments and the recent case experience of the World Intellectual Property
Organization’s Arbitration and Mediation Center (WIPO Center) in
administering mediation cases involving research collaboration and technology
transfer agreements, it can be affirmed that mediation is increasingly foreseen
as an ADR mechanism for the resolution of disputes in R&D
collaborations.
Parties choose mediation for various reasons. When research partners
with different cultural and social backgrounds - for example research
organisations, universities, large companies and SMEs – collaborate,
they may have diverging expectations and understandings of commercial and legal
concepts which may lead to conflicts. Once a conflict has arisen, cognitive,
cultural, social and emotional forces can distort rational decision-making.
This may put personal relationships and the timely performance of work to be
carried out at risk, or even endanger the project itself. In the context of
research collaborations, the importance of IP and IP management, including
dispute resolution, does not require elaboration. IP is fundamental to carry
out projects, and results generated under the project are protected by IP
rights in many cases. Finding a way to solve related conflicts in a timely and
cost-effective manner is important.
Mediation is a procedure,
agreed upon by the parties, in which a neutral third party, the
“mediator”, facilitates communication and dispute resolution by
the parties and helps them reach their own decision to settle the dispute. The
role of the mediator is primarily to facilitate the process but, if the parties
so request, the mediator may also offer an informal evaluation of the
dispute.
The involvement of a mediator may significantly alter the dynamics of
negotiation. He may help the parties understand each other’s views and
help them realistically assess alternatives to settlement. Additionally, he may
stimulate the parties to suggest creative settlements and help to find
solutions that meet the fundamental interests of all parties.
Mediation helps preserve
parties’ relationship or even enhance it, whereas
adversarial proceedings tend to polarize parties. Collaborative projects may
take several years and involve many partners from different countries. Choosing
a method for resolving disputes that preserves partners’ relationship
for the pending project - and for future collaborations - is important.
Mediation is a non-binding
procedure. This means that even though parties have agreed to
submit a dispute to mediation, they are not obliged to continue with the
mediation process after the first meeting. Also, the mediator cannot impose a
solution on the parties and, in order for any settlement to be concluded, the
parties must voluntarily agree to accept it.
Mediation is a confidential
procedure. Confidentiality applies to the existence of the
mediation process and the outcome. The parties, the mediator, and all other
participants will have to agree not to use or disclose to any outside party any
information related to the mediation. In innovation driven research projects,
in particular, confidential treatment of IP is of utmost importance, and should
be preserved during all phases of a project, especially in controversial
situations.
Parties may agree to submit future
disputes to mediation by including a dispute resolution clause in
consortium agreements or preparatory documents, such as memoranda of
understanding. The WIPO Center offers the following model clause:
"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]."
Parties may also agree at any stage of the project to submit
existing disputes to
mediation4.
For instance, such a submission agreement was used by the parties in
a WIPO Mediation relating to a pharma patent license. In this case a European
university holding pharmaceutical patent applications in several countries
negotiated a license option agreement with a European pharmaceutical company.
The company exercised the option and the parties started to negotiate a license
agreement. After three years of negotiations they were unable to agree on the
terms of the license. At that point the parties submitted a joint request for
WIPO mediation.
As requested by the parties, the Center appointed a lawyer with
longstanding working experience in the pharmaceutical industry and considerable
licensing experience to mediate. The parties requested that the mediator help
them reach an agreement on the terms of the license. In a one-day session, the
parties and the mediator identified the legal and factual issues. On this
basis, the parties continued direct negotiations amongst themselves and reached
a settlement agreement.
Additionally, parties may want to combine mediation with arbitration or expedited
arbitration to submit unresolved issues after the mediation process to
arbitration. Such step-by-step systems can help avoid an escalation of
processes while combining benefits where necessary. It is important to define
time limits for each phase to avoid undue delay in the resolution of the
dispute.
The WIPO Center provides
advice on and administers mediation procedures under the WIPO Mediation Rules.
It assists the parties in selecting and appointing a mediator with expertise in
the subject matter in dispute, administers financial aspects of the mediation
and assists in finding meeting rooms and providing other services. The subject
matter of the cases administered by the WIPO Center has included research and
development agreements, distribution agreements for pharmaceutical products,
patent licenses, software licenses, trademark co-existence agreements,
copyright issues, as well as patent infringement disputes.
Further information:
http://www.wipo.int/amc/en/mediation/
Contact WIPO Arbitration and Mediation Center
Email: arbiter.mail@wipo.int
Phone: +41 22 338 8247
1.
This article follows a general introductory article on Alternative
Dispute Resolution in Research & Development collaborations published in
the IPR Helpdesk Bulletin, num. 41, March
2009 (http://www.ipr-helpdesk.org/newsletter/41/html/EN/) and
will be followed by an article on arbitration in R&D collaborations. («)
2.
Competitiveness Council of 29-30 May 2008, Council conclusions on
The Launch of the “Ljubljana Process”- towards full realization
of ERA, as adopted by the Competitiveness Council at its meeting on 30 May
2008(«)
3.
Communication from the Commission to the Council and the European
Parliament, COM (2008) 588 final of 24.09.2008(«)
4.
Model clauses and submission agreements are available at
http://www.wipo.int/amc/en/clauses/index.html.(«)
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