On 5 May 2014, the World Intellectual Property Organisation (“WIPO”) Arbitration and Mediation Center released its new Mediation, (Expedited) Arbitration and Expert Determination Rules. The new rules come into effect on 1 June 2014 and (with the exception of the provisions on emergency relief) will apply to all WIPO mediations, arbitrations and expert determinations commenced on or after that date.
The revisions to the WIPO Rules reflect many of the trends seen in other recent revisions to institutional arbitration rules. These include joinder, consolidation, emergency relief and effective case management.
New joinder and consolidation provisions have been included in the 2014 Rules, as disputes involving multiple parties constitute an increasingly large part of the WIPO caseload. This, in turn, reflects the trend towards multi-party know-how and IP arrangements in technology transactions. The 2014 Rules confirm that Tribunals can make joinder orders, but only with the consent of all parties involved, including the party to be joined. Under the 2014 Rules, a Tribunal may also consolidate new proceedings with pending proceedings, but only with the consent of all the parties and any Tribunal that has been appointed.
The 2014 WIPO Rules also enable a party to apply for emergency relief from an arbitrator before a Tribunal is constituted (only where the arbitration agreement is entered into on or after 1 June 2014). WIPO will select an emergency arbitrator from its list of Neutrals, which comprises over 1,500 individuals including both dispute resolution generalists and a range of IP specialists.
In an attempt to improve the time and cost efficiency of proceedings, the 2014 Rules make a preparatory conference mandatory. In addition, parties are encouraged to consider whether they intend to appoint an independent expert early in the proceedings.
The role of the WIPO Rules for the resolution of IP disputes is underlined by two recent high-profile European Commission decisions on the licensing of Standards Essential Patents (SEPs), i.e. patents which will be necessarily infringed by the implementation of an industry standard, in the telecoms sector.
In the first decision (concerning Motorola Mobility), issued 29 on April 2014, the Commission held that the seeking and enforcing of injunctions in relation to Standards Essential Patents (in the particular circumstances of that case) had infringed Article 102 TFEU. In the second decision, concerning Samsung’s SEPs, the Commission accepted legally binding commitments from Samsung to adopt a licensing framework providing for a negotiation period of 12 months, and that failing agreement, the parties would submit to the jurisdiction of a court or an arbitral tribunal for a binding decision on FRAND (Fair, Reasonable And Non-Discriminatory) terms.
Given the large number of potential licensees of SEPs coupled with the commercially sensitive nature of licence rates and terms, it is likely that the unusually extensive provisions on confidentiality and trade secrets in the 2014 WIPO Rules will make them attractive for future FRAND determinations, as well as other IP disputes.