WIPO Arbitration Case Examples
The WIPO Arbitration and Mediation Center is receiving an increasing number of
requests for arbitration. Up-to-date information about the Center’s caseload is available
on the Center’s website.
WIPO arbitrations have involved patent infringements, patent licenses, software licenses,
distribution agreements for pharmaceutical products, research and development
agreements, trademark co-existence agreements, consultancy agreements, art marketing
agreements, joint venture agreements, and domain name issues. WIPO arbitrations have
involved parties based in different jurisdictions, such as China, Finland, France,
Germany, Ireland, Israel, Italy, Japan, the Netherlands, Panama, Romania, Switzerland,
and the United States of America. The venues of the arbitration proceedings have
included France, Germany, the Netherlands, Switzerland, and the United States of
America, and the proceedings have been conducted in several languages that include
English, French and German.
Amounts in dispute have varied between US$ 20,000 to several hundred million US$.
The remedies claimed in arbitration proceedings have included damages, infringement
declarations and specific performance.
Set out below are six examples of arbitrations conducted under the WIPO Arbitration
Rules.
A WIPO Trademark Arbitration
A WIPO Patent Arbitration
A WIPO Mediation Followed by WIPO Expedited Arbitration
A WIPO Expedited Arbitration
A WIPO Biotech/Pharma Arbitration
A WIPO Patent Expedited Arbitration
A WIPO Trademark Arbitration
A North-American software developer registered a trademark for communication
software in the United States and Canada. A manufacturer of computer hardware based
elsewhere registered an almost identical mark for computer hardware in a number of
Asian countries. Both parties had been engaged in legal proceedings in various
jurisdictions concerning the registration and use of their marks. Each party had
effectively prevented the other from registering or using its mark in the jurisdictions in
which it holds prior rights. In order to facilitate the use and registration of their respective
marks worldwide, the parties entered into a coexistence agreement which contains a
WIPO arbitration clause. When the North-American company tried to register its
trademark in a particular Asian country, the application was refused because of a risk of
confusion with the prior mark held by the other party. The North-American company
requested that the other party undertake any efforts to enable it to register its mark in that
Asian country and, when the other party refused, initiated arbitration proceedings.
Following proposals made by the Center, the parties appointed a leading IP lawyer as
sole arbitrator. In an interim award the sole arbitrator gave effect to the consensual
solution suggested by the parties, which included the granting by the hardware
manufacturer of a license on appropriate terms to the North-American company.
A WIPO Patent Arbitration
A French pharmaceutical research and development company licensed know-how and
patented pharmaceuticals to another French company. The license agreement includes an
arbitration clause that provides that any dispute will be resolved under the WIPO
Arbitration Rules by an arbitral tribunal consisting of three members in accordance with
French law. Faced with the licensee’s apparent refusal to pay the license fee, the R&D
company initiated arbitration proceedings.
A WIPO Mediation Followed by Expedited Arbitration
A publishing house entered into a contract with a software company for the development
of a new web presence. The project had to be completed within one year and included a
clause submitting disputes to WIPO mediation and, if settlement could not be reached
within 60 days, to WIPO Expedited Arbitration. After 18 months, the company was not
satisfied with the services delivered by the developer, refused to pay, threatened
rescission of the contract and asked for damages. The publishing house filed a request for
mediation. While the parties failed to reach a settlement, the mediation enabled them to
focus the issues that were addressed in the ensuing expedited arbitration proceeding.
A WIPO Expedited Arbitration
A producer of artistic performances entered into an agreement with an insurance
company to finance arbitration proceedings. The finance agreement includes a WIPO
Expedited Arbitration clause. The producer brought arbitration proceedings against an
Asian entity in Singapore. The producer claimed the costs of the Singapore arbitration
under its finance agreement. Faced with the financing company’s apparent refusal to
make such payment, the producer filed WIPO Expedited Arbitration proceedings
indicating that, as a result of the deadline imposed by the arbitral tribunal in Singapore, it
required that a final award be issued within six weeks after the commencement of the
WIPO Expedited Arbitration. Following consultations with the parties, the WIPO Center
appointed a sole arbitrator. After a one-day hearing, the sole arbitrator issued a timely
arbitral award within five weeks.
A WIPO Biotech/Pharma Arbitration
A French biotech company, holder of several process patents for the extraction and
purification of a compound with medical uses, entered into a license and development
agreement with a large pharmaceutical company. The pharmaceutical company had
considerable expertise in the medical application of the substance related to the patents
held by the biotech company. The parties included in their contract a clause stating that
all disputes arising out of their agreement would be resolved by a sole arbitrator under the
WIPO Arbitration Rules.
Several years after the signing of the agreement, the biotech company filed a request for
arbitration with the Center alleging that the pharmaceutical company had deliberately
delayed the development of the biotech compound and claiming substantial damages.
The Center proposed a number of candidates with considerable expertise of
biotech/pharma disputes, one of whom was chosen by the parties. Following the parties’
written submissions, the arbitrator held a three-day hearing in Geneva, Switzerland for
the examination of witnesses. This not only served for the presentation of evidence but
also allowed the parties to re-establish a dialogue. On the last day of the hearing, the
disputants accepted the arbitrator’s suggestion that they should hold a private meeting. As
a result of that meeting, the parties agreed to settle their dispute and continued to
cooperate towards the development and commercialization of the biotech compound.
A WIPO Patent Expedited Arbitration
An Asian inventor held several US and European patents over components used in
consumer goods. The Claimant entered into an exclusive license agreement over the
patents with a US manufacturer. The license agreement provided for the use of WIPO
Expedited Arbitration to resolve disputes regarding possible infringement of the patents.
A dispute arose between the parties regarding the payment of royalties under their license
agreement. As a result, the inventor filed a Request for Arbitration and Statement of
Claim with the Center requesting a declaration that his patents had been infringed. The
parties did not agree on the identity of the sole arbitrator for this case. As a consequence,
and in order to cover the full spectrum of patents at stake, the Center appointed as sole
arbitrator an English patent lawyer with very substantial experience in US patent law.
Following several evidentiary motions, motions for the protection of business secrets and
for the examination of samples of the products, the arbitrator held a hearing for the
examination of witnesses. In the final award the arbitrator addressed issues of
infringement of the asserted patents and whether those patents had been anticipated.