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N. 5, November 2002
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 | IP & RTD: Articles
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Alternative dispute resolution for infringements of SMEs' IP rights in WIPO
José Checa
Case Manager, WIPO Arbitration and Mediation Center, Genf |
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Acquisition and maintenance of an intellectual property right is meaningless if that right cannot be enforced in the marketplace. The more valuable the intellectual property assets of the SME, the greater the chance that others would want to make use of them, if possible, without having to pay for them. Thus, it is the possibility of enforcement which allows an intellectual property right to be exploited as a commercial asset.
In many instances, when IP rights (patents, trademarks, etc.) are being infringed, the parties to the dispute will simply resort to litigation in a court of law that has jurisdiction over the issue. If the infringement has taken place in several countries, an SME would normally have to enforce its rights in different places before different courts. For this reason, it may be advisable to use an alternative dispute resolution mechanism - usually "arbitration" or "mediation" - which may be less costly and less time-consuming for the SME. These alternative options are generally available for contractual disputes (e.g. software licenses, distribution agreements for pharmaceutical products and research and development agreements) as long as an appropriate contractual clause has been included in the contract or has been subsequently agreed by the parties; and also for non-contractual disputes (e.g. patent/trademark infringement) which would require an agreement between the parties to the dispute for it to be settled by mediation or arbitration.
Arbitration is a procedure whereby a dispute is submitted, by agreement of the parties, to an arbitrator or to a tribunal of several arbitrators who give a decision on the dispute that is binding on the parties. In contrast to mediation, once the parties have freely agreed to submit a dispute to arbitration, a party cannot unilaterally withdraw from the arbitration. Arbitration generally has the advantage of being a less formal procedure than court proceedings, and an arbitral award is more easily enforceable internationally. It also allows the parties to the dispute to select an arbitrator who possesses specific knowledge of the subject matter of the dispute.
Mediation (also known as conciliation) is a procedure in which a neutral intermediary, the mediator, endeavors, at the request of the parties to a dispute, to assist them in reaching a mutually satisfactory settlement of the dispute. The mediator does not have any power to impose a settlement on the parties. Mediation is also voluntary in the sense that either party may, if it so chooses, abandon the mediation at any stage prior to the signing of an agreed settlement. An advantage of mediation is that the parties retain control of the dispute resolution process, including the selection of the mediator. Besides, it allows the parties to agree on settlements that take into account not only past events, but most importantly, their specific needs and interests that may serve as a basis for their future relationship.
The above options could also be combined and a dispute could be submitted to mediation followed, in the absence of a settlement, by arbitration.
Amongst a number of institutions that an SME can address for seeking assistance in resolution of its dispute without recourse to court proceedings, the WIPO Arbitration and Mediation Center is one that provides a variety of services for the resolution of commercial disputes between private enterprises, including SMEs. The Center provides services in relation to arbitration (including expedited arbitration in which the arbitration process is conducted in a shortened time frame), mediation, disputes concerning domain names (Internet addresses), and other specialized services for the resolution of disputes. The procedures all have different legal implications and consequences, as well as different advantages.
Recently, the Center has observed a marked increase in the number of arbitrations and mediations under the WIPO Arbitration, Expedited Arbitration and Mediation Rules that have been filed with the Center. These have involved parties from Austria, China, France, Germany, Hungary, Ireland, Israel, Japan, the Netherlands, Panama, the Republic of Korea, the United Kingdom and the United States of America.
For more information on WIPO dispute resolution services, see the Web site arbiter.wipo.int.
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