What does it cost to defend your IP rights?

• Author: Ignacio de Castro - Judith Schallnau
• Position: WIPO Arbitration and Mediation Center, WIPO
• Pages: 23-27

p. 23WIPO | MAGAZINE

The continued rise in de mand for intellectual prope rty (IP)

rights suggests that with an unde rperforming ec onomy the

importance of IP rig hts is only growing. The expanding co m-

mercialization of technolo gy, illustrated by record numbers of

international patent lings (see Wor ld Intellectual Property Indi-

cators Report 2012) points to a long-term trend with inventors

increasingly patenting their inventions in multiple countries. The

corresponding growth of international business transactions

brings with it an increas ed risk of IP-related disputes. The re-

sources required to handle such disputes can be considerable,

especially if the dispute involves litigation in multiple countries.

At the same time, such disputes place a se rious burden on the

continuation and expansion of business. Careful consideration

of the risks associated with techno logy-related disputes goes

a long way in preventing, and resolving, dis putes. But what is

the best strategy to adopt? What are the best p ractices in this

area and what trends are eme rging? To gain a better under-

standing of technology-related dispute resolution practices, the

WIPO Arbitration and Mediati on Center (WIPO Center) recently

conducted an international survey to gauge how alternative

dispute resolution (ADR) me chanisms, such as mediation and

arbitration, fare compared to cour t litigation when it comes to

resolving such disputes.

“The survey conrm s that parties to technology-rel ated agree-

ments are worried about the h igh costs and lengthy timelin es

of disputes, especially in a n international context,” noted WIPO

Director General Francis G urry at the launch of the sur vey

report. “While cou rt litigation remains th e default path, survey

responses indicate that ADR of fers attractive options in terms

of cost and time, as well as enforceabi lity, quality of outcome,

and condentiality,” he added.

The survey offer s a number of interesting insights into curre nt

dispute resolution practic es across a broad range of business

areas.

TECHNOLOGY-RELATED AGREEMENTS CONCLUDED IN

THE PAST TWO YEAR S

Of the types of agreeme nts listed in the survey, participants most

frequently concluded non-disclosure agreements, followed by

assignments, licenses, agreements on settlement of litigation,

research and developme nt (R&D) agreements and merger and

acquisition agreements.

What does it cost

to defend your

IP RIGHTS? By Ignacio d e Castro

and Judith Schallnau,

WIPO Arbit ration

and Mediation Center, WIPO

About the survey

e Internation al Survey on Dispute Resolu tion in Technology

Transactions (www.wipo.int/amc/en/center/survey/results.

html) assess es current use and emergin g trends in the use of

ADR mechanis ms compared to court liti gation in technology

disputes. It was d istributed to companie s, research

organizations , universities, government b odies, law rms,

individua ls and other entities involved in t echnology transfer

and technology d isputes worldwide. It captu res data about

the types of t echnology-related agr eements concluded in

the past two yea rs; the types of disput es arising from these

agreements; the met hods used to resolve them; and t he

reasons behi nd this.

e survey’s nd ings are based on the 393 respon ses received

by the WIPO C enter from small (employing 1-10 people) to

large entities (employing over 10,0 00 people) in 62 countries

and operating i n many dierent business are as, including

pharmaceut icals, biotechnology, infor mation technology,

electronics, t elecommunications , life sciences, chemica ls,

consumer goods and mec hanical engineer ing. In addition

to written su bmissions, over 60 telephone inter views were

conducted with st akeholders in 28 countries .

e survey wa s developed with the support of a n expert

group comprising i n-house counsel and exter nal experts

in technology d isputes from a broad range of ju risdictions

and business a reas, variou s professional associ ations,

including the I nternational Associat ion for the Protection of

Intellectua l Property (AIPPI), the A ssociation of University

Technology Managers (AUT M), the International Federation

of Intellectua l Property Attor neys (FICPI) and the Licensing

Executives Soc iety International (LE SI), and with assistance

from the WI PO Economics and Statistics D ivision.

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