arbitration in ip and technology disputes
DESCRIPTION
These are the slides of a presentation on IP and technology arbitration given at the annual meeting of the Dutch Association of Patent Attorneys given at April 11, 2014.TRANSCRIPT
Arbitration
in IP/technology disputes
Ernst-Jan Louwers
Jaarvergadering Orde van Octrooigemachtigden
Eindhoven, 11 April 2014
We have always had wars…
And we have weird inventions and
patents…
And arbitration…
• Typical IP/tech related conflicts
• ADR differences and reasons
• IP & tech specifics
• Unitary Patent and ADR
• Applicable law and enforcement
• Draft Dutch arbitration act
• Brainport Technology Arbitration Institute
Agenda
• Boutique firm: lean & mean in the premier league
• Risk management, compliance and governance
• Advice, contracts and litigation
• Enable and empower
• Killing showstoppers
• On top of tech developments with 8 lawyers and CTO
• Board member Brainport Centre for Technology & Law
Intro
Typical IP/tech conflicts
• Creation and R&D o Inventorship & (co)ownership
o Background/foreground IP
o Cross licensing
o Payment
• Exploitation o Infringement
o Licensing and distribution
o Royalties
o Exclusivity
o Termination
ADR: different tasts
Mediation Arbitration / expedited
arbitration
Expert determination
Informal consensual: may open new cooperation in future
Formal consensual procedure
Consensual procedure
Mediator to assist Chosen arbitrator(s) decide Expert(s) to decide
Mediator not to impose decision or solution
Binding decision (award) Binding or non-binding
Settlement = contract In principle internationally enforceable
Expert‟s opinion = contract
Leaves open other dispute resolution
Final unless arbitral appeal or remission
Non-binding leaves open other procedures
Preventing costly and lenghty procedures
Preventing costly and lenghty procedures
Preventing costly and lenghty procedures
Why choose ADR in IP/tech?
• Single procedure
o Multiple jurisdictions
o Avoid expense and complexity multi-jurisdictional litigation
o Avoid risk of inconsistent results
• Party control
o More control by parties
o Selection of suitable decision-makers
o Parties may jointly choose applicable law, place and language
o Faster and efficient
o Cost savings
Why choose ADR in IP/tech?
• Neutral expertise o Law and technical background
o ADR can be neutral to law, language and institutional culture of both parties
o Avoiding home court advantage for one party
• Confidentiality
• Finality of awards
• Enforceability of awards o New York Convention
Why no ADR?
• Non contractual disputes
o Infringement
o Other unlawful behaviour, not under contract
But the parties may voluntarily submit to arbitration!
• Publicity
• Establish public legal precedent
IP specific complexity
• Nature of IP - monopoly
• Territoriality and internationality of IP
o Validity, recognition and enforcement of award
o Arbitrability: depending on affected national IP
o (In)validity only inter partes?
• validity issues only effect between parties?
• Dutch law: exclusive competence of court at The Hague
• for instance Belgian law: arbitration erga omnes with third party right to oppose decision; art 51 Belgian Patent Act
IP specific complexity
• Possible limitations to arbitrability of validity
• Applicable law
o Substantive law
• Existence, invalidation
• Ownership title
• Scope of protection
o Procedural
• Arbitrable?
IP specific issues
• Composition of arbitral tribunal
• Interim injunctions – also ex parte?
• Evidence: interim relief
• Protecting confidential Information
o Confidentiality of arbitration
o Confidentiality of evidence inter partes • contractual arrangements or procedural order; or
• confidentiality advisor
• Experts
Technology specific issues
• Composition of arbitration tribunal
o Specific expertise required?
o Engineer, IT expert, financial experts, forensic?
• Interim measures required?
• Partial solution attainable?
Unitary Patent & ADR
• Patent mediation and arbitration centre
• Disputes within scope of AUPC
• Challenging arbitral award? Which court?
• Validity and infringement: to be determined under lex protectionis or lex proprietas?
Unitary Patent & ADR
• Article 35(2) AUPC: “patent may not be revoked or limited in mediation or arbitration proceedings”
• Article 79 AUPC: “patent may not be revoked or limited by way of settlement”
• Inter partes…?
• Preliminary questions to UPC
o Not by arbitrators… (?)
• Gordian knots to be solved by Unitary Patent Court…
Unitary Patent & ADR
Applicable law and
enforcement
• WIPO Arbitration Rules: lex arbitri o Procedural law to be determined by place of the
arbitration
• But substantive law may be different o Choice of law
o Private international law, including Rome I treaty
• New York Convention of 1958
• European Convention on International Commercial Arbitration of 1961
Draft arbitration act NL
• Remission introduced
• Challenging arbitral award limited to court of appeal (Hof) and Supreme Court (Hoge Raad)
o latter can be opted out – advisable!
• Electronic arbitration enacted
o advantage over court
Brainport Technology Arbitration
Institute
www.brainporttechlaw.nl
Initiative of Brainport Centre for Technology & Law
BTAI: why?
• Existing legal frameworks may no longer fit new realities created by technology
• Increased and ever increasing complexity
• Courts no specialists
• No specialised ADR institute for technology
• BTAI close to the industry
• Supported by courts
BTAI: scope
• National and international disputes o technology
o tech company
• „Technology‟ o industrial high-tech, IT, automotive, nanotechnology, biotechnology,
gentechnology, robotics etc.
o but also manufacturing and „low-tech‟
• Examples o technology licenses, IP issues, infringement
o joint R&D, open innovation, co-creation, consortium agreements
o distribution and marketing agreements
o IT contracts, Internet disputes, 3D printing/additive manufacturing
BTAI: advantages
• Confidentiality
• Cost effectiveness
• Time
• Specialists speaking the industry‟s language
• List of specialists non-exhaustive
• Documents to be exchanged electronically
• Hearings to take place by videoconferencing
• Urgent matters: arbitral injunction
BTAI: road to realisation
• Independent foundation („stichting‟)
• Organisation
o board to control foundation and appoint mediators, independent experts or arbitrators
o secretariat for administrative matters
o supervisory board
o board and secretariat members cannot be appointed as mediator, expert or arbitrator
BTAI: many challenges
• Composition of board, supervisory board
• Funding
• Rules and clauses
• Arbitral appeal?
• List of independent arbitrators
o Criteria, disciplines
o Share lists with other organisations like WIPO
• Publication of decisions vs confidentiality…
• Collaboration and training
ADR: sound alternative!
But not without risk
