The Guide to IP Arbitration

Harsh Patidar and Monish Raghuwanshi review this book by the Global Arbitration Review on how intellectual property disputes can be solved by way of arbitration

Globally, a large number of Intellectual property (hereafter “IP”) owners were loath to the arbitrability of IP disputes. The kernel reason behind this is the presence of certain bottlenecks, myths, challenges, and issues ascribable to particular IP disputes which can be solved by way of arbitration.

This book, in a succinct manner and without indulging in pontification, describes how arbitration can be an effective means to pauper the needs and necessities of IP owners and dispels most of the myths which prevent the owners to subscribe themselves to arbitration when the IP disputes come into the picture. Also, the book curtly talks about a plenitude of certain epochal issues in arbitrating IP disputes. In addition to this, the author gratifies and whips up the readers by providing medication in the form of various remedies for better treatment of IP matters with the help of arbitration.

The book is divided into four parts. The first part talks about the need of arbitrating international IP disputes by invoking arbitration. The second part deals with a wide range of strategic considerations as the arbitration evolves and advances. The third part mulls over certain relevant issues in arbitrating IP matters. Finally, the fourth part serves a reader with the remedies available for damages in international IP arbitration.

The Need to Have a Bromantic relationship between IP & Arbitration

Indubitably, international arbitration appears as an alluring alternative to the process of adjudicating many international and cross-border intellectual property matters in sundry national courts. The mechanism of arbitration allows parties from assorted jurisdictions and legal backgrounds to agree on, and retreat to, efficacious and effective dispute resolution processes fitted to their particular needs and stipulations. In continuation to this, the author talks about some of the perceived benefits of arbitration in international IP matters. In this context, the author opines that intellectual property is introduced and defined by national statutory authorities. A priori, a national court is authorized to adjudicate the matters regarding IP infringement claims under its domestic laws and regulations, albeit, it may not be cosy or have the authority to decide identical claims under a foreign law. Under such circumstances, the author feels that arbitration may better fit in with international and cross border contractual matters in the field of IP, comprising of various other matters concerning ‘global licensing agreements with cross-border aspects between two or more parties from different countries; ‘fair, reasonable and non-discriminatory (FRAND) rates for standard-essential patents (SEPs) (if the parties have entered into an agreement concerning this subject)’; ‘cross-border joint ventures’; and ‘cross-border M&A transactions involving IP issues, such as the transfer of ownership or rights to IP or indemnity obligations as to IP infringement claims’.

The author concludes the first part by providing some examples of the extent to which various common law jurisdictions permit adjudication of IP disputes by way of arbitration. For instance, the author deliberates upon the jurisdictions of the United Kingdom (hereafter “UK”, for short), the United States, Singapore, etc. In the UK, there exists no statutory regime for adjudication of IP disputes by invoking arbitration in the Arbitration Acts 1950, 1979, or 1996. Instead, the UK Patents Act 1977 recognized the arbitrability of Intellectual Property matters. In the United States, statutory law recognizes that parties can agree to invoke arbitration for adjudication of patent matters. In Singapore, there exists one IP (Dispute Resolution) Act, 2019. This same Act was brought into existence after the amendment of the Singapore Arbitration Act and the International Arbitration Act to permit the arbitrability of IP matters.

The Revelation of Strategic Considerations

The author, in the second part of the book, explores an uncommon backdrop against which the parties to Intellectual Property matters find themselves stuck in arbitration in the place of national courts or other statutory bodies for IP. Further, the author traverse through a broad sphere of strategic considerations as the mechanism of arbitration advances. In the context of strategic considerations, the author opines that the exchange of knowledge and discovery in an Intellectual Property arbitration envisages being importantly more restricted in comparison to the IP disputes adjudicated by a court in some common law nations. This is because when adjudication by the national courts or other bodies, the parties to Intellectual Property matters in many various jurisdictions partake in at least a modest level of document interchanged and other uncovering. In some countries, like in the USA and the UK, discovery in a case related to IP is somewhat considerable and, especially in complicated matters, can extant for many years. Moreover, the ways of discovery in Intellectual Property matters include interchanging of the documents, filing of a written set of questions or interrogatories, a plea for admissions, and submissions of relevant fact and expert witnesses irrespective of whether they may adduce evidence at the trial stage. For example, in the United States, a large number of federal courts ask the parties to IP matters to provide a standard set of declarations.

Additionally, the author, in the same part, succinctly and measly, talks about the redressal of the IP matters resolution paradox just by having a confluence of mediation with arbitration and litigation. It can be observed that clients and attorneys often resort to negotiation or litigation to be their choices for redressal of IP matters. Until now, many IP doyens prefer to have adjudicative processes such as litigation and arbitration, to resolve the IP disputes. On the other hand, there exists a galore of non-adjudicative processes. These non-adjudicative ways such as mediation and conciliation can help to bring down the time and the cost to the final result, ameliorate settlement rates, restore business connections and give some hefty satisfaction ratings.

The Potholes in road to IP & Arbitration

In the third part of the book, the author deeply discusses certain relevant issues of the arbitrability of IP disputes. The author demonstrates the core issues that a party encounters frequently when traversing through the process of arbitrating trademark, patent, and copyright matters. There are certain similar key issues that can be ascribed to the arbitrability of patent disputes, trademark disputes, and copyright issues such as the composition of the arbitral tribunal, revelation of documents and declarations, the mechanism of seeking injunctive relief, and appointment of experts by the tribunal for solving the IP matter by employing arbitration.

The panacea to the potholes in the road to IP & Arbitration

As to every action, there is an equal and opposite reaction. Similarly, to every issue in arbitrating Intellectual property disputes, there exists a solution. In the fourth part, the author sagaciously canvasses some provisional as well as permanent remedies to resolve the issues related to arbitrating IP disputes. There exist certain types of effective remedies like seeking a preliminary injunction, Anton Piller orders, Mareva injunction, obtaining security for costs, and security for claims.

The Futuristic Perspective

After reading this book, one can easily predict or anticipate the future of IP arbitration by highlighting some action points. They are as follows: the mechanism of arbitration might face snowballing competition from the courts to solve IP disputes, ADR would become more integrated with state court proceedings, the development would take place in the area of blockchain and smart contracts to the extent that certain steps in arbitration proceedings would get completed with the help of the blockchain technology, and the arbitrability of IP disputes would become more modernized with arrival and usage of technical tools in arbitration such as smart contracts.

We took around one month to devour, digest and process whatever we had read in this book. To finish this book from cover to cover, a reader would need a modicum of the same commitment and concentration that the editors put into writing it. The book is a must-read for all those who want to learn, research and unveil the relationship between IP and Arbitration. Francis Bacon had correctly said, “there are only a few books which are worth digesting and chewing.” This book is one such book.