1. Overview

In today’s global technological world, intellectual property (IP) has a prominent role in manycommercial transactions. As international trade becomes more critical, it gives way to increasing numbers and complexity of cross-border IP disputes. For disputing parties seeking to avoid litigation, alternative dispute resolution (ADR) processes provide effective means of resolving IP disputes, with or without third-party involvement. The leading organization for IP is the World Intellectual Property Organization (WIPO), which influences global IP policy, facilitates cross-border cooperation in IP,[1]   and offers services for the protection of IP,[2] including the Patent Cooperation Treaty (PCT) filing system,[3] the Madrid System[4] for International Trademark Protection and the Hague System[5] for International Design applications. WIPO also offers a host of ADR processes at their Arbitration and Mediation Center (AMC),[6] and the Intellectual Property Office of Singapore (IPOS),[7] located in their Singapore Office. This article will discuss how the AMC and IPOS may be used as effective alternatives to litigation for the resolution of international IP disputes.

2. WIPO Arbitration and Mediation Center

The WIPO Arbitration and Mediation Center (AMC) has existed in Geneva, Switzerland since 1994, and was created to offer alternative options for the resolution of “international commercial disputes between private parties.”[8] The WIPO AMC is a neutral, international and non-profit dispute resolution provider that offers time- and cost-efficient alternative dispute resolution (ADR) options, such as mediation, arbitration, expedited arbitration, and expert determination, enabling private parties to efficiently settle their domestic or cross-border IP and technology disputes out of court. In particular, the AMC offers the following benefits to disputing parties:

“Parties in WIPO ADR proceedings can draw upon a growing database of over 2,000 independent WIPO arbitrators, mediators and experts from more than 90 jurisdictions. The members of the WIPO List of Neutrals range from highly specialized practitioners and experts with specialized knowledge in the areas of patents, trademarks, copyright, designs, trade secrets, data or other form of intellectual property that is the subject of the dispute, to seasoned commercial dispute resolution generalists. Their geographical diversity suits the international character of many of the disputes before the WIPO Center.”[9]

Experts include practitioners with specialized knowledge in technology, patent and intellectual property law, and expertise in commercial disputes. The AMC employs the WIPO Arbitration Rules[10] to appoint an appropriate neutral to the dispute in question, taking into consideration the method of ADR, the governing law, the jurisdiction of the parties, the field of technology, language, venue of proceedings, arbitration seat, etc. Given that most disputes are brought by international parties, the diversity of the WIPO neutrals adds to the process of fairness and neutrality promised by the AMC.[11]

In addition to dispute resolution, the WIPO AMC also aids in the drafting of contract clauses pursuant to their procedures, aids parties in deciding whether certain procedures are appropriate for their dispute, develops custom ADR procedures for special circumstances in commercial transactions, provides training for arbitrators and mediators and ADR processes, and provides ad hoc arbitration services under the UNCITRAL Arbitration Rules.[12]

3. WIPO Singapore Office

A second WIPO location was opened in Singapore in 2010, through a Memorandum of Understanding (MOU),[13] establishing a collaboration between WIPO and the Intellectual Property Office of Singapore (IPOS). This partnership has proven to be particularly successful in the resolution of technologically complex IP disputes, particularly for disputes about patent and software licenses, patent inventorship, entitlement, or patent revocation proceedings,[14] trademark branding issues, distribution of any agreements for pharmaceutical products, research and development agreements, as well as patent infringement issues. The IPOS provides an option to arbitrate or mediate these issues through the Singapore International Arbitration Center (SIAC),[15] or the Singapore International Mediation Center (SIMC)[16] which operates under the WIPO Mediation Rules.[17]  In addition to standard arbitration or mediation, the IPOS also offers negotiation and expert determination services delivered by a host of qualified experts and neutrals.[18]

Part of the appeal of the IPOS is that disputing parties can benefit from The Singapore Convention on Mediation (SCM), and The Singapore Convention on Mediation Act (SCMA), both of which were enacted in 2020. The SCM and SCMA give the Singapore courts power to enforce international commercial settlement agreements that result from mediation at the SIMC, allowing disputing parties to have the option of obtaining a binding outcome to their disputes.[19]

Additionally, the IPOS also offers a unique hybrid process where disputing parties have an option to mediate their disputes, after the commencement of arbitration proceedings, and to convert the mediated settlement agreement between the parties into a “consent arbitral award” that is enforceable worldwide under the New York Convention.[20]

Finally, collaboration between WIPO and the Government of Singapore has additionally yielded the ASEAN Mediation Programme (AMP),[21] which provides funding and resources for countries in the Southeast Asian region to explore how ADR may be utilized for the benefit of their cross-border IP disputes, making it a unique and beneficial resource.

4. Conclusion

WIPO offers several options for alternative dispute resolution, which are offered by the WIPO Arbitration and Mediation Center (AMC), often in conjunction with the Intellectual Property Office in Singapore (IPOS). The collaborative effort has culminated in a specialization in the resolution of global intellectual property disputes and offers disputing parties a number of options and advantages to resolve their disputes out of court.

[1] World Intellectual Property Office (WIPO), <online: https://www.wipo.int/portal/en/index.html>; M. A. Bagley, Patent Law in the Global Perspective (New York: 2014) at 430; World Intellectual Property Organization (WIPO), “Index,” online: <http://www.wipo.int/portal/en/index.html>.

[2] Convention Establishing the World Intellectual Property Organization, April 26, 1970, art 3.

[3] World Intellectual Property Organization (WIPO), “Patent Cooperation Treaty (PCT),”, online: <http://www.wipo.int/pct/en/>.

[4] World Intellectual Property Organization (WIPO), “Madrid System,” online: <https://www.wipo.int/en/web/madrid-system>.

[5] World Intellectual Property Organization (WIPO), “Hague System,” online: <https://www.wipo.int/en/web/hague-system>.

[6] World Intellectual Property Organization (WIPO), “Arbitration and Mediation Center,” online: <http://www.wipo.int/amc/en/>.

[7] WIPO Singapore Office, online: <https://www.wipo.int/en/web/office-singapore>.

[8] See 6.

[9] World Intellectual Property Organization (WIPO), “WIPO Neutrals,” online: <https://www.wipo.int/amc/en/neutrals/index.html>.

[10] WIPO Arbitration Rules, online: <https://www.wipo.int/amc/en/arbitration/rules/index.html>.

[11] World Intellectual Property Organization (WIPO), “WIPO Neutrals,” online: <http://www.wipo.int/amc/en/neutrals/>.

[12] UNCITRAL, “UNCITRAL Model Law on International Commercial Arbitration” online:

www.uncitral.org/pdf/english/texts/arbitration/ml-arb/07-86998_Ebook.pdf>.

[13] Singed on September 28, 2011.

[14] Intellectual Property Office of Singapore (IPOS), “Resolving Disputes,” online: <https://www.ipos.gov.sg/Services/HearingsandMediation/ResolvingDisputes.aspx>.

[15] Singapore International Arbitration Center (SIAC), online: <https://en.wikipedia.org/wiki/Singapore_International_Arbitration_Centre>

[16] Singapore International Mediation Center (SIAC), online: <https://simc.com.sg/>.

[17] WIPO Mediation Rules, online: <http://www.wipo.int/amc/en/mediation/rules/>.

[18]Resolution of IP Disputes at the IPOS, online:<https://www.ipos.gov.sg/manage-ip/resolveip-disputes-overview/resolveip-disputes/>.

[19] IP Dispute Resolution Hub at IPOS, online: <https://www.ipos.gov.sg/global-ip-hub/ip-dispute-resolution-hub/>.

[20] United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards, (New York, 10 June 1958), online: <https://www.newyorkconvention.org/english>.

[21] WIPO-ASEAN Mediation Programme (AMP+), online: <https://www.ipos.gov.sg/global-ip-hub/ip-dispute-resolution-resources/wipo-asean-mediation-programme>.

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Dr. Daisy Williams is an Intellectual Property (IP) Lawyer with the Law Society of Ontario (LSO), and a Registered Patent and Trademark Agent with the College of Patent Agents and Trademark Agents (CPATA).

Daisy also holds a Ph.D in Physics (Optics-Photonics), and has over a decade of experience working with various technology companies, including hi-tech start-ups, small-and-medium enterprises (SMEs), and large international corporations. Using her legal expertise coupled with her strong technical background, Daisy monitors the evolving intellectual property landscape and recent case law to be on the leading edge of legal developments.