Mediation, (Expedited) Arbitration and Expert Determination
description
Transcript of Mediation, (Expedited) Arbitration and Expert Determination
Arbitration and Mediation Cases and
Dispute Resolution Clauses in the context of R&D
World Intellectual Property Organization WIPO Arbitration and Mediation Center
Leuven, November 13, 2009
Judith Schallnau, LL.M.WIPO Arbitration and Mediation Center
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Mediation, (Expedited) Arbitration and Expert Determination
• Mediation: an informal procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of their dispute, based on the parties’ respective interests and enforceable as a contract.
• Arbitration: a private procedure in which the parties submit their dispute not to a court but to one or more chosen arbitrators, for a formal decision based on the parties’ respective rights and obligations and enforceable as an award under arbitral law.
• Expert Determination: a procedure in which the parties submit a technical/scientific issue to one or more experts who make a determination on the matter, which can be binding unless the parties have agreed otherwise.
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Alternative Dispute Resolution (ADR) in Research and Development Collaborations
ADR• International• Neutral expertise• Efficiency• Confidentiality• Preserving party relationships
Characteristics R&D collaborations• Cross-border dimension of R&D/ Internationalization (FP7) • Rapid evolution of research processes and emerging technological
areas• Complex questions on IP and technical issues• Large investments in time and money • Mediation Directive 2008/52/EC • Diverging expectations/ understandings of commercial/ legal concepts • Long-time collaborations
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Legal Basis
Conclusion of Contract
Preparatory stage During the Collaboration
Outside the Collaboration
DISPUTE RESOLUTION CLAUSE in the contract
for future disputes
SUBMISSION AGREEMENTS
for existing disputes
Letters of IntentNon-disclosure
agreementsOptions
Consortium agreementsResearch and development contracts
Material transfer agreements
Licensing agreements
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Options
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
WIPO Dispute Resolution Clause – Mediation
• Future disputes "Any dispute, controversy or claim arising under, out of or relating
to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language].“
• Existing diputes "We, the undersigned parties, hereby agree to submit to
mediation in accordance with the WIPO Mediation Rules the following dispute:[brief description of the dispute]The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language]."
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
WIPO Dispute Resolution Clause – (Expedited) Arbitration
• Arbitration "Any dispute, controversy or claim arising under, out of or relating to this
contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators][a sole arbitrator]. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute, controversy or claim shall be decided in accordance with the law of [specify jurisdiction].“
• Expedited Arbitration "Any dispute, controversy or claim arising under, out of or relating to this
contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute, controversy or claim shall be decided in accordance with the law of [specify jurisdiction]."
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Mediation followed by Arbitration
• Try mediation before arbitration, at least until
lapse of time period
termination
• Combining the benefitsarbitration well-prepared
"Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be [Brussels]. The language to be used in the mediation shall be [English]”
If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation within [60][90] days of the commencement of the mediation, it shall, upon the filing of a Request for Arbitration by either party, be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. Alternatively, if, before the expiration of the said period of [60][90] days, either party fails to participate or to continue to participate in the mediation, the dispute, controversy or claim shall, upon the filing of a Request for Arbitration by the other party, be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [a sole arbitrator]. The place of arbitration shall be [Brussels]. The language to be used in the arbitral proceedings shall be [English]. The dispute, controversy or claim referred to arbitration shall be decided in accordance with [Belgian] law."
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Areas of Potential Disputes • Research
Intellectual property rights: Inventorship (Co-) Ownership, transfer Access rights background/ foreground Patent infringement Dissemination
Confidentiality (non-disclosure agreements) Project-management
Compliance with work plan Payment modalities
• Exploitation Control and use of research results (including licensing) Technology valuation Manufacturing, marketing, distribution obligations
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Mediation ProcessCOMMENCEMENT
APPOINTMENT OF MEDIATOR
INITIAL CONFERENCE
MEETINGS
CONCLUSION
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Recent Mediation Case (I)• U.S. company/ Swiss company
• Patent infringement (automotive sector, U.S. patents)
• Settlement agreement 2007
• Dispute Resolution clause: WIPO Mediation followed by WIPO Dispute Resolution clause: WIPO Mediation followed by WIPO ArbitrationArbitration
• Request for mediation in May 2009
• WIPO list of candidates
• Parties chose a patent practitioner, knowledge of U.S. Patent Laws, fluent in English, experience in mediating patent infringement disputes
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Recent Mediation Case (II)• Two-day hearing in August (June) in Geneva, WIPO
• Mediator gave introduction, explained rules of the hearing (e.g. confidentiality, caucus) and his role
• Early agreement on framework for royalty payments
• Further discussions on business aspects
• Settlement in the afternoon of second day: « Term sheet » down-payment, annual instalments, net sales
based royalty Re-drafted original licensing agreement, final agreement until
September 2009
• End of 2-years dispute within 5 months, parties avoided U.S. arbitration/ high costs, further collaboration possible
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
WIPO Pharma Mediation (I) • European university holding pharmacautical patent applications
in several countries
• Pharmaceutical company
• License option agreement, company exercised option
• 3 years negotiations of license agreement
• Parties unable to agree on terms of license
• Submission agreementSubmission agreement to WIPO mediation
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
WIPO Pharma Mediation (II) • Parties requested the WIPO Center to appoint a mediator
• Qualifications: lawyer, working experience in pharma industry, licensing experience
• Parties requested mediator to help them reach an agreement on the terms of the license
• One-day meeting session: parties identified issues and improved legal understanding
• Continued direct negotiations on this basis, reached settlement agreement
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
WIPO ARBITRATION
Request for Arbitration
Answer to Request for Arbitration (30 days)
Appointment of Arbitrator(s)
Statement of Claim(30 days)
Statement of Defense(30 days)
Hearings
Closure of Proceedings(9 months)
Final Award (3 months)
Further Written Statements and Witness
Statements
Request for Arbitration and Statement of Claim
WIPO EXPEDITED ARBITRATION
Answer to Request for Arbitration and
Statement of Defense (20 days)
Appointment of Arbitrator
Hearing (maximum 3 days)
Closure of Proceedings(3 months)
Final Award (1 month)
•One Exchange of Pleadings•Shorter Time Limits•Sole Arbitrator•Shorter Hearings •Fixed Fees
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
WIPO R&D Biotech/ Pharma Dispute (I)
• European biotech company held several patents for the extraction and purification of a compound with medical uses
• License and development agreement with a large pharmaceutical company with expertise in the medical application of the substance related to its patents
• Development agreement contained a clause referring to WIPO Arbitration Rules
• Biotech company filed request for arbitration alleging that the pharmaceutical company had deliberately delayed the development of a biotech compound
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
WIPO R&D Biotech/ Pharma Dispute (II)
• Parties chose one out of the Center’s list of proposed candidates with experience in biotech/ pharma
• Written submissions
• Three-day hearing in Geneva for examination of witnesses
• On the last day, following a suggestion made by the arbitrator, the parties held a private meeting and agreed to settle their dispute
• Continued to cooperate towards the development and commercialization of the biotech compound
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Settlement in WIPO Administered Cases
Settlement in WIPO Mediation
Settled 72%
Not Settled 25%
Pending 3%Settlement in WIPO Arbitration
Settled 50%Not Settled 40%
Pending 10%
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Judith Schallnau, WIPO ADR in R&D Collaborations, November 13, 2009, Leuven
Additional Information• WIPO Center
Website: http://www.wipo.int/amc/en/ Email: [email protected], [email protected] Telephone: +41 22 338 7256 (Center secretariat: -8706)
• WIPO Workshops Conference on Dispute Resolution in International Science
and Technology Collaboration, April 2005 http://www.wipo.int/amc/en/events
• Thank you!