Enforcement of intellectual property (IP) rights in other countries is often complicated. Careful consideration needs to be given to taking action through administrative, criminal or civil channels.
If you decide to enforce your IP rights in another country, you will usually need the legal expertise of IP professionals in that country. Australian IP professionals with relevant international experience would be able to identify and instruct a suitable overseas firm to advise and provide representation.
The general options available to you to enforce your IP rights in another country depend on:
- the nature of your IP rights in that country
- the commercial status of the infringer
- whether the infringer can be identified and summonsed
- the amount of damages sought.
Careful consideration also needs to be given when developing strategies for investigating, procuring seizures and following up with government authorities in the penalty phase.
Resolving disputes with international parties
The Arbitration and Mediation Center of the World Intellectual Property Organization (the WIPO Center) provides a range of Alternative Dispute Resolution (ADR) services designed to resolve international disputes for IP and technology.
The WIPO Center delivers these services through high-quality videoconferencing facilities to make this service available digitally and help settle matters across international borders.
This provides an informal process in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of their dispute, based on the parties’ respective interests.
How to submit a dispute to WIPO
To encourage ADR, the WIPO Center provides model contract clauses which can be included in contracts between parties involving intellectual property. This facilitates agreement between the parties to refer future disputes to WIPO ADR.
If parties are already facing a dispute, they can refer such dispute to the WIPO Center by completing and signing a submission agreement.
In the absence of a dispute resolution agreement, the party proposing ADR will need to submit a request for mediation to the WIPO Center. They will also need to provide a copy of this submission to the other party. The WIPO Center can assist all parties in considering a request to participate in ADR.
The parties may agree on the appointment of the mediator, arbitrator or expert, or they may request assistance from the WIPO Center to identify suitable candidates. Candidates can be selected from Australia or overseas jurisdictions which must satisfy each parties’ requirements.
The parties are free to determine where they want the case to take place. To assist the time and cost efficient resolution of IP disputes, the WIPO Center provides free online case administration options, including an online docket and videoconferencing facilities.
WIPO ADR Resources and Publications
- General Information
- WIPO ADR rules
- Select a Dispute Resolution Clause
- Calculate Case Fees
- Case Filing Guidelines