Expert Determination Option for IPOS Patent Proceedings

Patent disputes often involve complex technical issues. 

With expert determination, such issues can be referred to experts in the relevant technical area.

A flowchart outlining the typical process for a patent revocation case is set out here as an example of how expert determination may apply.  Other contentious patent proceedings, such as patent inventorship and entitlement proceedings, may largely follow the process in the flowchart where relevant.

Overview


What is expert determination?

  • It is a mode of alternative dispute resolution offered by the WIPO Mediation and Arbitration Center where a technical or scientific 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 otherwise agree. 
  • Parties' mutual consent to expert determination is required.

Why use expert determination?

  • It is flexible, confidential, and could save parties time and cost, especially when they have global disputes.

Who is the expert?

  • Parties are free to choose their expert and if they cannot agree, the WIPO Mediation and Arbitration Center will appoint an expert in the field after consultation with the parties. 
  • The WIPO Center’s panel of experts have specialised knowledge relevant to IP issues in a broad range of technical areas e.g. chemistry, IT, life sciences, mechanical engineering and telecoms.

What is the process like?

  • 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 has a set of Expert Determination Rules that apply to expert determination cases filed with it.

Procedure


Step 1: Submission of Agreement and Request for Expert Determination

  1. Parties may submit to expert determination by filing their Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings with the WIPO Mediation and Arbitration Center (WIPO Center) Office in Singapore; copying IPOS.

     

  2. The Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings shall:
    • 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);
    • 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. 
    • 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.

Step 2: Appointment of Expert

  1. Upon receiving the Agreement and Request for WIPO Expert Determination in IPOS Patent Proceedings, the WIPO Center Office in Singapore will contact the parties regarding, as appropriate, the appointment of the expert and the applicable fees.  

  2. While the parties are free to identify a suitable candidate for such appointment by themselves, the WIPO Center Office in Singapore is available to assist with the provision of a shortlist of qualified candidates taking account of the requirements of the case.

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  Expert's Fees 
  • SGD 500
  • 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:
http://www.wipo.int/amc/en/expert-determination/

The applicable WIPO Expert Determination Rules are available at:
http://www.wipo.int/amc/en/expert-determination/rules/index.html

Information on the WIPO Center is available at:
http://www.wipo.int/amc/en/center/background.html

Step 3: Result of Expert Determination

  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. 

     

  2. This period may be extended to 2 months upon further request and justification by parties to the satisfaction of the Registrar. 

     

  3. 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).  

     

  4. Upon receipt of the agreed statement, IPOS shall give effect to the statement as relevant to the IPOS proceedings.

     

  5. Failing submission of any agreed statement within the provided time period, either party may provide the expert determination to IPOS.

     

  6. 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.

     

  7. 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.

     

  8. In all of the above scenarios, IPOS may convene a Case Management Conference to discuss with the parties how the IPOS proceedings will proceed thereafter.