Parties to intellectual property (IP) disputes filed at the Intellectual Property Office of the Philippines (IPOPHL) can now consider mediation at the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center in accordance with a Memorandum of Understanding (MOU) between IPOPHL and WIPO. Disputes in this area may be related to, among others, trademark oppositions pending before IPOPHL, administrative complaints for violation of intellectual property rights, disputes involving technology transfer payments and disputes relating to the terms of a license involving the author’s rights to public performance or other communication of his work.
The WIPO Arbitration and Mediation Center is a neutral, international and non-profit dispute resolution provider that offers time and cost efficient alternative dispute resolution options. WIPO mediation and arbitration enable parties to efficiently settle their domestic or cross-border IP and technology disputes out of court.
In general, Alternative Dispute Resolution (ADR) offers the following advantages:
- Parties can agree to resolve in a single procedure a dispute involving intellectual property thereby avoiding the expense and complexity of multi-jurisdictional litigation, and the risk of inconsistent results;
- ADR is neutral to the law, language and culture of the parties, thereby avoiding any home court advantage that one of the parties may enjoy in court-based litigation;
- ADR proceedings are private. Parties can agree to keep the proceedings and any results confidential. This allows them to focus on the merits of the dispute without concern about its public impact, which may be of special importance where commercial reputations and trade secrets are involved; and
- Unlike court decisions, which can generally be contested through one or more rounds of litigation, arbitral awards are not normally subject to appeal.
Under the IP Code, it is mandatory for the following types of disputes to undergo mediation at the IPOPHL BLA-Alternative Dispute Resolution Services (ADRS):
- Administrative complaints for violation of intellectual property rights (IPV) and/or unfair competition;
- Inter partes cases (IPC);
- Disputes involving technology transfer payments;
- Disputes relating to the terms of a license involving the author's rights to public performance or other communication of his work;
- Cases appealed to the Office of the Director General (ODG) from decisions of the Bureau of Legal Affairs (BLA) and the Documentation, Information and Technology Transfer Bureau (DITTB); and
- All other cases which may be referred to mediation during the settlement period declared by the Director General
With the recent MOU, this mediation service by the IPOPHL BLA-Alternative Dispute Resolution Services (ADRS) now includes an option for parties to resolve disputes through the WIPO Arbitration and Mediation Center. The following is the procedure for referral of an IP case to WIPO mediation:
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This WIPO Mediation option offered by IPOPHL helps raise awareness of ADR options available to IP owners and may be especially advantageous for parties seeking to settle related disputes in multiple jurisdictions.