UNITED NATIONS CONFERENCE ON TRADE AND DEVELOPMENT Dispute Settlement World Intellectual Property Organization 4.1 Arbitration and Mediation Center ii Dispute Settlement N O T E The Course on Dispute Settlement in International Trade, Investment and Intellectual Property consists of forty modules. This module has been prepared by Mr. D. Plant at the request of the United Nations Conference on Trade and Development (UNCTAD). The views and opinions expressed in this module are those of the author and not necessarily those of the United Nations, WTO, WIPO, ICSID, UNCITRAL or the Advisory Center on WTO Law. The designations employed and the presentation of the material do not imply an expression of any opinion whatsoever on the part of the United Nations concerning the legal status of any country, territory, city or areas or of its authorities, or concerning the delimitation of its frontiers or boundaries. In quotations from the official documents and the jurisprudence of international organizations and tribunals countries are designated as reported. The United Nations holds copyright to this document. The course is also available in electronic format on the UNCTAD website (www.unctad.org). Copies may be downloaded free of charge on the understanding that they will be used for teaching or study and not for a commercial purpose. Appropriate acknowledgement of the source is requested. UNCTAD/EDM/Misc.232/Add.25 Copyright © United Nations and World Intellectual Property Organization, 2003 All rights reserved 4.1 Arbitration and Mediation Center iii TABLE OF CONTENTS Note ii What You Will Learn 1 Objectives 3 1. Introduction 5 1.1 WIPO 5 1.1.1 The Organization 5 1.1.2 Objectives 5 1.1.3 Main Areas of Activity 5 1.2 The WIPO Arbitration and Mediation Center 6 1.2.1 The Center’s Role 6 1.2.2 Procedures Offered by the Center 7 1.2.3 Services Offered by the Center 7 1.2.4 Advantages of Dispute Resolution Procedures Offered by the Center 9 1.2.5 Types of Disputes that May be Submitted to Arbitration or Mediation 9 1.2.6 Who May Refer Disputes to the Center? 10 1.2.7 Fees and Costs 10 1.2.8 Summary 10 1.2.9 Test Your Understanding 11 2. Mediation 13 2.1 Overview 13 2.1.1 Benefits of Mediation 14 2.1.2 Agreeing to Mediate 14 2.1.3 Suspension of Running of Limitation Periods 16 2.1.4 Venue of the Mediation 16 2.1.5 Commencing the Mediation 17 2.1.6 The Mediator 17 2.1.7 Summary 19 2.1.8 Test Your Understanding 19 2.2 Conducting the Mediation 20 2.2.1 Preparation 20 2.2.2 Initial Conference 21 2.2.3 Mediation Sessions 21 2.2.4 Summary 27 2.2.5 Test Your Understanding 27 2.3 Confidentiality 28 2.3.1 Confidentiality of the Entire Process 28 2.3.2 Proprietary Information of a Party 29 2.3.3 Settlement Privilege 30 2.3.4 Summary 30 2.3.5 Test Your Understanding 30 iv Dispute Settlement 2.4 Termination of the Mediation 31 2.5 Mediation Fees and Costs 32 2.5.1 Center’s Fees 32 2.5.2 Mediator’s Fees 32 2.5.3 Failure to Pay 33 2.5.4 Summary 34 2.5.5 Test Your Understanding 34 2.6 Liability 34 2.7 Role of the Center as Administering Authority 35 2.7.1 Summary 35 2.7.2 Test Your Understanding 35 3. Arbitration, Including Expedited Arbitration 37 3.1 Overview 37 3.1.1 Arbitration Defined 37 3.1.2 Benefits of Arbitration for Intellectual Property Disputes 37 3.1.3 Recommended WIPO Contract Clauses and Submission Agreements 39 3.1.4 Place of Arbitration 41 3.1.5 Laws Applicable to the Arbitration 42 3.1.6 Summary 44 3.1.7 Test Your Understanding 44 3.2 Commencing the Arbitration 44 3.2.1 Request for Arbitration and Answer to the Request 44 3.2.2 Representation 45 3.2.3 Summary 45 3.2.4 Test your understanding 46 3.3 Composition and Establishment of the Tribunal 46 3.3.1 The Arbitral Tribunal 46 3.3.2 Appointment Procedures 47 3.3.3 Appointment Considerations 48 3.3.4 Availability 50 3.3.5 Challenges to Arbitrators 51 3.3.6 Release from Appointment and Replacement of an Arbitrator 51 3.3.7 Liability and Defamation 52 3.3.8 Jurisdiction of the Tribunal 52 3.3.9 Summary 53 3.3.10 Test Your Understanding 53 4. Conducting the Arbitration 55 4.1 Tribunal’s Authority with Respect to Conducting the Proceedings 55 4.2 Language of the Arbitration 55 4.3 Submissions 56 4.4 Interim Measures 56 4.1 Arbitration and Mediation Center v 4.5 Preparatory Conference 57 4.5.1 Summary 58 4.5.2 Test Your Understanding 58 4.6 Presentation of Evidence 58 4.7 Default, Closure and Waiver 60 4.7.1 Default 60 4.7.2 Closure of Proceedings 61 4.7.3 Waiver 61 4.8 Confidentiality 61 4.8.1 Summary 63 4.8.2 Test Your Understanding 64 4.9 The Award 64 4.10 Expedited Arbitration: Special Features 66 4.11 Fees and Costs 67 4.12 Summary 68 4.13 Test Your Understanding 69 5. Conclusion 71 6. Further Reading 73 6.1 Center’s Web site and Publications 73 6.2 Bibliography 73 6.3 Contact Details 74 6.4 Annexes 75 4.1 Arbitration and Mediation Center 1 WHAT YOU WILL LEARN This module presents an overview of the role, rules and services of the WIPO Arbitration and Mediation Center (the WIPO Center). The WIPO Center has issued rules for use in various dispute resolution procedures, namely WIPO Mediation, WIPO Arbitration and WIPO Expedited Arbitration. While the WIPO procedures focus on intellectual property disputes, nothing prevents the parties to a dispute from using them in other types of commercial disputes. In the administration of WIPO procedures, the Center makes available its detailed list of specialist arbitrators and mediators. The first section of this module provides an introduction to WIPO, the WIPO Center’s role and a brief overview of the three main procedures it administers. The second section addresses the mediation process and the different steps involved in mediation under the WIPO Mediation Rules. The third section presents an overview of the arbitration procedure under the WIPO Arbitration Rules, the legal framework applicable to the arbitration, the commencement of the arbitration and the composition and establishment of the arbitral tribunal. The fourth section includes a step-by-step analysis of the subsequent stages and procedural elements involved in an arbitration conducted under the WIPO Arbitration Rules and the WIPO Expedited Arbitration Rules, namely: the arbitral tribunal’s authority to conduct the proceedings, language of the arbitration, submissions, interim measures, preparatory conference, presentation of evidence, confidentiality, award, and fees and costs. This module describes the main features and advantages of the procedures designed by the Center. It aims to provide parties and their representatives with the information necessary to select the most appropriate dispute resolution procedure, to draft the corresponding dispute resolution clause to be inserted in an agreement and to gain an insight into the conduct of WIPO procedures. 4.1 Arbitration and Mediation Center 3 OBJECTIVES Upon completion of this module, the reader should be able to: ••••• Describe the main features and advantages of the procedures designed by the WIPO Arbitration and Mediation Center; ••••• Select the most appropriate dispute resolution procedure for any given case; and ••••• Draft appropriate dispute resolution clauses for insertion into an agreement.