Critical study of International Dispute Settlement mechanism for an Intellectual Property Dispute

International Dispute Settlement mechanism for an Intellectual Property Dispute

Written by: Neetu Lather

Introduction

International dispute settlements are diverse, they should stay within the limits of peaceful means. This derives from Article 33, paragraph 1 of the UN Charter, which states that ‘the parties to any dispute and if it continues then is likely to affect IN peace & security so firstly should seek a solution by negotiation, inquiry, arbitration, judicial settlement, mediation, conciliation, chose regional agencies or arrangements, or can chose other peaceful means of their own choice’.

Ways of dispute settlement mechanisms categorization have been proposed in the literature. Can divide them into 2 categories, namely diplomatic means, in which control of settlement is with the parties such as mediation, conciliation, negotiation, consultation or inquiry & legal means, in which the settlement is legally binding for the parties such as arbitration & judicial mechanisms. The new classification was suggested based on 3 factors: the method of dispute resolution, the institutional setting & assigned power.

TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights)

By Part III of the Agreement on the TRIPS Agreement, WTO members are obliged to provide the IP enforcement mechanisms mentioned in the agreement. The Agreement seeks to ensure prescribed minimum standard to be met by civil, administrative & criminal procedures & remedies. TRIPS Agreement works indifferently. The earlier conventions were essentially concerned with national treatment whereas TRIPS addresses harmonization and promote harmonization in a comprehensive global context with a formal dispute settlement mechanism, the dispute settlement process at the WTO.

Intellectual property dispute

IP is creations of the human intellect, such as literary and artistic works; designs; inventions; & symbols, names & images used in trade. Even after the best efforts, IP disputes unfortunately can arise. Such disputes include infringements of 1st IPR by 3rd parties or 3rd IPR by 1st parties. Both the above-mentioned cases can result in court proceedings, cease of use of IP assets, and/or compensation payments can be demanded.

  1. Legal proceedings

If a dispute is brought before a court by parties for IP rights or by activities of foreign States, this may raise PIL issues, such as contested views as to the decision Court’s jurisdiction, determine the law applicable, & the recognition & enforcement of foreign judgments.

How these issues are addressed by courts in international IP disputes, contributes to rising in IP enforcement, enhance the predictability & avoid concerns about redundant, the finality of court proceedings, or inadequate liability, preserve the public resources of the courts as well as the private resources of the parties, and ultimately facilitate the sound administration of justice.

  • Applicability of private international law (PIL) in intellectual property (IP) disputes

As there is no specific comprehensive PIL regime for IP at the IN level, there are IN & regional PIL instruments that apply to IP, and IP instruments that refer to PIL issues.

  • Decide Court’s jurisdiction over the dispute

Requires consideration of what connection the parties, the subject matter, and the relief sought have with that State. Jurisdiction will be decided according to the PIL rules of the State where the court is situated, which may be affected by IN or regional PIL or IP instruments. In case when jurisdiction is in more than 1 State to decide a dispute, so in practice, it’s allowed to the claimant to select a court”.

  • Determine the law applicable to the case

Choosing between different bodies of law, which involves a consideration of the national law of the court (particularly mandatory rules), PIL principles & the parties’ own choice of law. Although attempts to offer a neutral approach to the issue, courts should be aware that national rules may interact with this process. The guidelines provided apply to issues related to substance; if the subject matter is merely procedural, the court will apply the law of the forum (i.e., its procedural law).

  • Reorganization and enforcement of the decision in another State

There are two sets of courts involved:

  • The court which made the judgment (the court of origin). The court has considered the difficulties a party may have in enforcing its judgment in another State.
  • The court of the State which is requested to recognize or enforce the judgment of the court of origin (the court addressed).
  • Issues relating to administrative or judicial cooperation are encountered

In cross-border civil or commercial transactions or disputes, difficulties can be encountered if the defendant or a witness is domiciled or the evidence is located outside the State where the proceedings are initiated; if a foreign State issues the necessary public documents; or if parallel proceedings arising out of the same dispute are initiated in different States.

This is because each state has its own legal and administrative systems. Cooperation between the authorities of different States can remove obstacles deriving from the complexity of different national systems. The HCCH, therefore, develops Conventions to facilitate cooperation through different mechanisms. These Conventions allow national administrative bodies and courts to, among other things, collect evidence abroad, admit foreign public documents and transmit documents for service abroad more efficiently.

  • Alternative dispute resolution

The complex issues like validity, ownership, infringement & contractual elements involved in an IP proceeding that covers multiple jurisdictions may result in the parties choosing ADR mechanisms that enable multijurisdictional disputes to be resolved in one single proceeding, by minimizing jurisdictional or When no established comprehensive PIL regime for IP at the IN level is there, then there are IN & regional PIL instruments which apply to IP, & IP instruments which refer to PIL issues.

Applicable law hurdles, and which may result in internationally enforceable awards. IP litigation is costly. For most IP & technology-related disputes, ADR may be suitable such as arbitration, mediation, and expert determination. If well managed, ADR may save time, money & provide a range of additional benefits.

WIPO ADR

WIPO Arbitration & Mediation Center provides an IN, neutral & non-profit dispute resolution system. WIPO Center has offices in Switzerland, Geneva, & Singapore, it offers ADR options such as mediation & arbitration to permit private parties to efficiently settle their domestic or cross-border commercial disputes. The WIPO Center specializes in IP & technology disputes. It focuses on time & cost-efficient ADR options.

Disputes can be referred to WIPO Arbitration or Mediation by parties through a contract clause (for the submission of future disputes under a particular contract) or, in absence of it, through a submission agreement (for existing disputes) or a unilateral request.

Arbitration

Arbitration is a process where all parties agree that the dispute can be decided by one or more arbitrators who then make a binding decision on the dispute. The arbitration procedure is private, confidential & less formal than court proceedings. The Arbitration award is more easily enforceable internationally than an award through legal proceedings. Arbitration being a private alternative usually rule outs court options. The WIPO Arbitration & Expedited Arbitration Rules are a combination of legal certainty as well as practical flexibility. The dispute can be referred by parties through a contract clause or, in the absence of it, through a submission agreement.

Mediation

Mediation is a process where a neutral intermediary, the mediator, helps parties in settling with mutual satisfaction. The mediator is not a decision-maker like a judge or an arbitrator. Settlement is always recorded as an enforceable contract. The mediation procedure is non-binding as controlled by the parties, confidential and interest-based.

This can help to preserve good business relations with the other parties involved. It leaves the option of litigation or arbitration. Model clauses for mediation of WIPO Rules are Mediation, Mediation followed, in the absence of a settlement, by expedited arbitration, Mediation followed, in the absence of a settlement, by expert determination.

Mediation Contract Clause electing WIPO Rules is the most frequent basis for requesting WIPO mediation. In ongoing court proceedings, the opportunity is with parties to refer their dispute to WIPO Mediation, either as per court suggestion or as per agreement between parties. For each of these routes to WIPO Mediation, WIPO makes available model clauses and submission agreements.

Expedited Arbitration

Even if efficiency benefits are offered by arbitration, the WIPO Expedited Arbitration Rules specifically permit the procedure to be conducted in a short time & less costly manner. In principle, there is only one exchange of pleadings. The arbitral tribunal will normally include 1 arbitrator. Proceedings should be finished within 3 months of either the delivery of the Statement of Defence or the establishment of the tribunal, whichever occurs later.

Expedited arbitration is less useful for complex patent disputes which usually require extensive production of evidence, longer hearings or expert analysis. If the matter is not settled expedited arbitration them followed by the medication and Mediation followed, in the absence of a settlement, by court litigation. By observing WIPO Center case list it can be stated that WIPO Expedited Arbitration is appropriate for software, R&D, copyright, and trademark disputes, etc.

Expert Determination

The parties by mutual consent adopt a procedure in which a specific matter is submitted (e.g., a technical question) to one or more experts who determine the matter. The parties can mutually decide to make such an outcome to be binding.

Conclusion

Disputes include infringements of 1st IPR by 3rd parties or 3rd IPR by 1st parties. Both the above-mentioned cases can result in court proceedings, can demand to cease the use of IP assets and/or compensation payments. The complex issues like validity, ownership, infringement & contractual elements involved in an IP proceeding that covers multiple jurisdictions may result in the parties choosing ADR mechanisms that enable multijurisdictional disputes to be resolved in one single proceeding.

About the Author

Critical study of International Dispute Settlement mechanism for an Intellectual Property Dispute

Neetu Lather

Student at Vivekananda School of Law and Legal Studies, VIPS.

She has participated in various academic events including moot court Competitions and successfully completed the Legal Drafting and Office Management Course at Vivekananda Institute of Professional Studies. Her areas of interest and research work are Constitutional Law, Competition Law, Criminal Law, Intellectual Property Rights and International law.

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