Introduction

We are enormously pleased to present this second edition of The Guide to IP Arbitration.

Having received very positive feedback about the first edition of this Guide, for which credit goes to the learned authors who contributed chapters and the excellent editorial team at Global Arbitration Review (GAR), we have not sought to change the book’s basic structure and focus; rather, we have sought to update it, where appropriate, and expand its reach into new areas.

To that end, most of the chapters in the Guide have been thoroughly revised to address new developments in international IP arbitration since the first edition was published. In addition, we have added two new substantive chapters, which we hope will be of interest to our readers.

First, we have added a chapter focused entirely on WIPO arbitration, written by the leaders of the IP disputes section at the WIPO Arbitration and Mediation Center. We believe that this new chapter on recent trends in WIPO arbitration and mediation adds an important perspective from one of the most active and well-established institutions in the world of IP arbitration.

Second, we have expanded the book’s discussion of the arbitrability of IP disputes by including a chapter on the arbitrability of IP disputes in Brazil. While the first edition covered the issue of arbitrability in common law jurisdictions and civil law jurisdictions in Europe and Asia (principally, Germany and Japan), the second edition adds an important perspective from the largest economy in Latin America – a region that was not represented in the first edition of the book.

Historical limitations on international IP arbitration

Historically, most international IP-related disputes were decided before national courts rather than arbitral tribunals. In part, that is because arbitration is a creature of contract and, in many IP-related disputes (such as disputes over the ownership of intellectual property or the alleged infringement of IP rights), that contractual relationship is missing.

In addition, the laws of some jurisdictions placed limitations on the arbitrability of certain IP-related issues (such as the validity of patents, copyrights or trademarks), viewing disputes over such rights as implicating matters of public policy that should be settled by national courts. Moreover, for companies for whom IP assets are the proverbial crown jewels, the unavailability of appellate review of arbitral awards has often been sufficient to discourage the use of arbitration to resolve disputes over such assets.

Growth of international IP arbitration

Times have changed. While it is still the case that some types of IP disputes are litigated predominantly in national courts, the number of IP-related cases going to arbitration continues to grow. Indeed, one of the noticeable trends in international arbitration in the past several years has been the growing use of arbitration to resolve IP-related disputes.

The caseload of the WIPO Arbitration and Mediation Center, while not a perfect proxy, illustrates this trend. Filings at WIPO (which include mediations and expert determinations as well as arbitrations) increased by over 15 per cent from 2018 to 2019, and by over 450 per cent from 2012 to 2019. In addition, WIPO administered 24 per cent more cases in 2020 and 45 per cent more cases in 2021. As these statistics make clear, the growth of international IP arbitration continues to accelerate.

What accounts for this growth? Recent changes in national laws, in Singapore, Hong Kong and elsewhere, have affirmatively sought to make arbitration more attractive and effective in resolving international IP disputes. And the historical resistance to the arbitrability of IP disputes has given way, in most jurisdictions, to a more liberal and pro-arbitration approach, and to the perception that arbitral tribunals should generally be free to adjudicate IP rights, at least on an inter partes basis.

Arbitral institutions, too, are developing procedures to facilitate the resolution of IP disputes and make arbitration more attractive to users. For example, the Silicon Valley Arbitration and Mediation Center, the Swiss Chambers’ Arbitration Institution, the Singapore International Arbitration Centre, the Japan Intellectual Property Arbitration Centre and the Hong Kong International Arbitration Centre, among others, have worked to make IP arbitration more attractive by creating dedicated panels of arbitrators with the expertise and experience to capably handle IP-related disputes. In addition, most arbitration institutions have now adopted mechanisms such as expedited arbitration or emergency arbitrator protocols, which can be used, for example, by IP owners to seek speedy remedies to protect their IP rights.

The genesis and organisation of this Guide

The idea for this book emerged from the recognition of these trends and from the fact that IP-related arbitration is very much its own animal within the world of international arbitration. It has a distinct set of features and challenges, which this book aims to explore from a truly global perspective.

To that end, in collaboration with the terrific team at GAR, we have worked to bring together leading practitioners from a wide range of jurisdictions who have expertise and experience both in international arbitration and in IP-related disputes. The response from every corner has been enthusiastic, and we are fortunate to have received contributions from many internationally recognised leaders in the field. These include authors from common law and civil law countries around the world, including the United States, the United Kingdom, Japan, South Korea, Germany, France, Switzerland and Brazil.

We have divided this Guide into four parts, each covering a set of considerations that should be taken into account at different points in the arbitral process. This approach allows for a journey through the life cycle of an arbitration, touching on the most important procedural and substantive issues that may arise in IP-related disputes.

‘Part I: Considerations Before a Dispute Has Arisen’ explores the planning for international IP arbitration. It starts by tackling the essential, threshold question: ‘Why arbitrate international IP disputes?’ This chapter addresses various perceived advantages of arbitration for IP disputes (such as relative speed and efficiency, resolution in a single forum, neutrality and choice of decision makers, enforceability of awards and confidentiality) before acknowledging some potential perceived limitations of arbitration in this context (such as limited availability of preliminary remedies and injunctive relief, inter partes versus erga omnes relief and lack of broad disclosure).

Part I then addresses another threshold issue: arbitrability. This chapter examines the extent to which various kinds of IP disputes can be arbitrated under the national laws of certain key common law and civil law jurisdictions. As noted, the second edition expands this discussion by including a new chapter on arbitrability from another important jurisdiction for international IP disputes: Brazil. Part I concludes by exploring specific issues and best practices in the drafting of international arbitration clauses in IP agreements.

‘Part II: Considerations Once a Dispute Has Arisen’ addresses the various issues that may arise once an IP arbitration gets under way. This begins with a chapter on the strategic considerations that parties should bear in mind during the pendency of an IP arbitration. Issues such as preparing for the arbitration, constituting the arbitral tribunal, managing ongoing business concerns, gathering evidence and navigating the initial procedural conference are all addressed in detail.

Part II then moves on to two related topics: first, a chapter on confidentiality in international IP arbitration, which is often of particular importance to parties in IP disputes given the usually sensitive nature of the assets at issue; and second, a chapter on disclosure in international IP arbitration, with a particular focus on privilege issues, recourse to national courts and compliance with the EU General Data Protection Regulation. Part II concludes with a chapter on the mediation of international IP disputes, emphasising the importance of making meditation available to parties in such disputes, in tandem with arbitration, to maximise the chances of reaching a successful outcome.

From these procedural beginnings, ‘Part III: Key Issues in Arbitrating Particular IP Disputes’ moves on to substance. The next three chapters address certain key substantive issues that arise when arbitrating particular kinds of IP disputes: the first addresses the arbitration of patent, copyright and trademark disputes; the second provides an overview of, and practical advice for, IP arbitration against sovereign states; the third considers the kinds of damages analyses that are most often undertaken in IP cases. Finally, Part III concludes with a new chapter addressing recent trends in WIPO arbitration, including with respect to domain name disputes.

‘Part IV: Future Directions’ is dedicated to exploring the future of international IP arbitration. It includes an in-depth analysis of current trends in IP arbitration and some revised predictions about future directions in this interesting and evolving field.

In addition to the hard-copy version of this book, the content is also available to subscribers on the GAR website at www.globalarbitrationreview.com/insight/guides. We expect that additional content, including additional chapters of this book, will appear first on the website, and we recommend that resource to our readers.

Future editions and acknowledgements

In future editions of this Guide, current chapters will again be updated, and additional chapters will be added, including on key issues that arise in certain types of IP disputes not covered in this edition, as well as on the recognition and enforcement of IP-related arbitral awards. We will also seek contributions from additional authors in some important jurisdictions and regions that could not be covered in this edition. We will always seek ways to improve future editions of this Guide and would welcome, with gratitude, any comments or suggestions from readers as to how that might be achieved.

Finally, some words of thanks and acknowledgement are in order. This book would not have been possible without the creativity and vision of David Samuels (GAR’s publisher) and the diligent efforts of the excellent team at GAR. In addition, a book such as this is only as good as its authors. We took great care, for this second edition as for the first, in assembling the highest calibre of experts in the field of international IP arbitration, and we are enormously grateful for the hard work and excellent contributions of each of them.


Notes

[1] John V H Pierce is a partner at Latham & Watkins LLP, and Pierre-Yves Gunter is a partner at Bär & Karrer Ltd.

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