Patent disputes often involve complex technical issues. A new procedure giving parties to contentious patent proceedings an expert determination option, where such issues can be referred to experts in the relevant technical area, applies with effect from 1 April 2014. A flowchart outlining the typical process for a patent revocation case is set out at Annex A by way of example of how this new procedure may apply. Other contentious patent proceedings, such as patent inventorship and entitlement proceedings, may largely follow the process in the flowchart where relevant.
1 Introduction to Expert Determination
1.1 Expert determination is an alternative dispute resolution (“ADR”) service offered by the World Intellectual Property Organization Arbitration and Mediation Center (“WIPO Center”) in which a technical, scientific or related business issue between the parties is submitted to one or more experts who make a determination on the matter. The expert determination is binding, unless the parties agree otherwise. Depending on the parties’ choice, expert determination may be used on its own or in conjunction with other ADR procedures such as mediation or arbitration. The WIPO Center makes available a set of Expert Determination Rules that apply to expert determination cases that are filed with it.
1.2 Parties’ mutual consent is required for expert determination as offered by the WIPO Center. Some advantages of expert determination are that it is flexible, confidential, and could save parties time and costs, especially where they have a global dispute. The parties can choose their expert and if they cannot agree, the WIPO Center will appoint an expert after consultation with the parties. The WIPO Center’s panel of experts have specialized knowledge relevant to IP issues in a broad range of technical areas e.g. chemistry, IT, life sciences, mechanical and telecoms.
2 Submission to Expert Determination
2.1 Parties may submit to expert determination by filing their Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings with the WIPO Center Office in Singapore; copying IPOS.
2.2 The Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings shall:
(i) Indicate whether the expert determination shall be binding on the parties (unless the parties have agreed otherwise, the expert determination shall be binding on them
(ii) Indicate the period for the expert determination procedure (60, 90 or 120 days). This period includes the time for the parties to agree on the appointment of the expert, the fixing of the expert’s fees, the conduct of the proceedings and the issuing of the determination. In terms of the suspension of the IPOS proceedings, this period may be extended upon further request and justification by parties to the satisfaction of the Registrar.
(iii) Pursuant to Article 5(b) of the WIPO Expert Determination Rules, contain or be accompanied by:
§ a description of the matter referred to expert determination;
§ an indication of any rights and the nature of any technology involved;
§ any documents or other information which the parties deem relevant to the expert determination;
§ observations on the scope of the expert determination;
§ if the parties have agreed on the appointment of a particular expert, the name, address and telephone, e-mail or other communication references of the expert; if the parties have not agreed on the appointment of a particular expert, observations on the expected qualifications of the expert;
§ information on any legal or other dispute resolution proceedings commenced or terminated in connection with the matter referred to expert determination; and
§ any additional information that the parties may consider relevant.
2.4 A reduced not-for-profit Schedule of Fees for administration fees and expert’s fees will apply. The WIPO Center Office in Singapore’s assistance to the parties to negotiate reasonable rates for the expert helps to contain the cost of this procedure.
WIPO CENTER’S ADMINISTRATION FEE
SGD 400 per hour
SGD 5500 per case*
* indicative rates for 20-25 hours of preparation and expert determination
Further information on WIPO Expert Determination is available at:
The applicable WIPO Expert Determination Rules are available at:
3 Result of Expert Determination
3.1 Once an expert determination has been made, the parties shall have 1 month to submit to IPOS any agreed statement in relation to the expert determination as relevant to the IPOS proceedings. This period may be extended to 2 months upon further request and justification by parties to the satisfaction of the Registrar. The agreed statement may comprise facts and/or legal consequences flowing from those facts and/or the parties’ decision on how they wish to proceed. This may include, for example, withdrawal of the patent revocation application (by the applicant), surrender of the patent, or amendment of the specification (by the patent proprietor). Upon receipt of the agreed statement, IPOS shall give effect to the statement as relevant to the IPOS proceedings.
3.2 Failing submission of any agreed statement within the provided time period, either party may provide the expert determination to IPOS.
3.2.1 Upon receipt of the expert determination, IPOS shall give effect to the expert determination, to the extent relevant to the IPOS proceedings, provided parties have agreed that the expert determination is binding, and provided the expert determination, on the face of the record, fulfils the terms of the Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings as relevant to the IPOS proceedings.
3.2.2 In other circumstances, either party can adduce the contents of the expert determination in evidence and IPOS will treat the expert determination as evidence filed on that party’s behalf.
3.3 In all of the above scenarios (i.e. 3.1 and 3.2) IPOS may convene a Case Management Conference (“CMC”) to discuss with the parties how the IPOS proceedings will proceed thereafter.
4 Integration of Expert Determination Option into IPOS Process for Patent Proceedings
4.1 After parties have filed their pleadings (initiating action and response), IPOS will convene a first CMC to encourage parties to consider expert determination. At the CMC, parties will receive the following documents:
(i) the present information document providing information on the expert determination option
(ii) a Notification to Registrar
(iii) a document entitled Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings for parties’ adoption if they wish to submit to WIPO Expert Determination, to be filed with the WIPO Center Office in Singapore.
Soft copies of (ii) and (iii) are available for download from the IPOS website at http://www.ipos.gov.sg/Services/HearingsandMediation/HearingsandMediationForms.aspx.
4.2 The parties should each complete the Notification to Registrar and return it to IPOS within 1 month from the first CMC, copying all relevant parties.
4.3 The parties may submit to expert determination at this juncture, when they return the Notification to Registrar. Please refer to Paragraph 2 above on Submission to Expert Determination for more details.
4.4 If the parties do not submit to expert determination, IPOS will convene a second CMC to discuss the state of play between parties and issue timelines for the filing of evidence.
4.5 Typically, following the second CMC, parties file their evidence. After evidence is filed, IPOS will convene a third CMC or a Pre-Hearing Review (PHR) to discuss the conduct of the matter with the parties and ascertain the state of play between parties. The expert determination option may be highlighted to parties again if appropriate. Other issues that may be discussed at the third CMC include re-examination (in patent revocation cases). If there are no other outstanding issues and parties are keen to have the matter heard by the Registrar rather than to consider ADR options (e.g. negotiation, mediation, expert determination), the matter will be fixed for hearing.
4.6 Notwithstanding the specific incorporation of the expert determination option to the process for patent proceedings at the first CMC (where the parties are required to indicate their choice in the Notification to Registrar), parties may submit to expert determination at the WIPO Center Office in Singapore at any time after proceedings are initiated and before a decision is issued by IPOS.
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