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
 
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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.

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