An expanding role for IP offices in alternative dispute resolution

• Author: Leandro Toscano and Oscar Suarez
• Position: WIPO Arbitration and Mediation Center
• Pages: 39-43

39WIPO M AGAZI NE

→

An expanding role

for IP Oces in

alternative dispute

resolution

By Leandro Toscano a nd Oscar Suarez,

WIPO A rbitration and Mediation Cent er

A startup nds out that anoth er company is using its

patent-protected invention without permis sion. Two small

companies are ghting over a trademark and are locked

in opposition procedure s before an IP Ofce. A software

developer is negotiating a contract to develop a mobile

application with a company base d in a different country

and is eager to avoid potential future disputes . What

can these IP stakeholder s do to protect their interests?

They could go to court to resol ve their differences, but

litigation tends to be expensive, time- consuming, and often

lacks IP specialization; also, cour t litigation is adversarial,

hindering business rela tions between the parties. Or they

could opt for voluntary alter native dispute resolution (ADR)

procedures, such as m ediation and arbitration, whi ch

are gaining popularit y as means of settling IP disputes

and reducing negative fall- out. In collaboration with the

WIPO Arbitration and Medi ation Center (WIPO Center),

a growing number of national IP and Copy right Ofces

are gearing up to bring the advantag es of ADR to their

IP stakeholders.

So how exactly can IP Ofces c ontribute to reducing

the impact of disputes arising in in novation and creative

processes?

In 2015, WIPO produced a Guide on Alternative Dispute

Resolution for Intell ectual Propert y Ofces and Cou rts.

The guide captures the WIPO Cente r’s growing experi-

ence in the area of ADR and of fers practical guidanc e

notably to IP Ofces se eking to integrate and promote

ADR options in their por tfolio of services. A substantially

updated edition of the guide was publis hed in 2018.

WIPO Mediation Pledge

In November 2018, the WIPO Center l aunched

the WIPO Med iation Pledge for IP and Technol-

ogy Disputes. W hile the Pledge is not a binding

commitment, it demonstrate s a signatory’s wil l-

ingness to consider med iation when resolving

its IP and technolog y disputes. In thi s way, it

promotes the use of mediation to help reduce

the impact of disa greements in innovation and

creative processes, a b enefit which mediation

cases admi nistered by WI PO have demonstrated

in practice. As noted b y WIPO Direct or General

Francis Gurr y, “mediation helps parties to save

time and costs and to get on w ith their business.”

The Pledge has alrea dy attracted more tha n 200

signatories fr om over 70 countries, notably IP

producers and pra ctitioners. Variou s institut ions,

including IP Of fices and industry a ssociations,

are also promoting t his initiative.