Arbitration in International Intellectual Property Disputes
Growing involvement of intellectual assets in today’s international commerce has inevitably increased international disputes concerning intellectual property rights between private parties. Given that many of such disputes involve parties from different countries and intellectual properties arising under the laws of more than one country, the parties to the dispute may find it undesirable or cumbersome to recourse to state courts. In particular, the territorial nature of intellectual property renders these disputes incapable of being resolved on an international basis. This can lead to litigation proceedings in multiple jurisdictions. Such multiplicity is susceptible to serious inconsistencies coupled with uncertainty and expense of enforcing foreign judgments in certain jurisdictions.
Arbitration, as an interesting alternative to court litigation, can offer genuine advantages to intellectual property disputes. Preservation of the business relationship, time and cost benefits, forum neutrality, expertise, flexibility, confidentiality of the proceedings, avoidance of the risk of inconsistent judgments and international enforcement of arbitration awards are among the most cited benefits of arbitration.
Yet, in many legal systems the arbitrability; i.e., the legal amenability of a dispute to be resolved by arbitration, of intellectual property disputes has been far from settled. Party autonomy is the principal characteristic of arbitration. Nevertheless, under the laws of most countries, party autonomy finishes where public interest begins. While Intellectual property rights are in fact monopolies granted by states and some of them must be registered with a state authority if they are to subsist, the question of whether parties can validly submit intellectual property disputes to arbitration has given rise to a historical national resistance to arbitration of intellectual property disputes in general and registered intellectual property disputes in particular. Although prevailing trends are shifting toward making most intellectual property dispute arbitrable, the issue has been explicitly resolved by the legislation of only a handful of countries.
The purpose of this lecture is to determine whether, and to what extent, international intellectual property disputes can be submitted to international arbitration. To answer this question, we shall distinguish between different intellectual property rights and different claims pertaining to them. Thus, the intellectual property rights will be divided into two broad categories: those that require registration and those that do not. For each of these categories we will examine the arbitrabilty of specific disputes. As will be seen, national legal systems tend to take different approaches to this issue; from excluding arbitration on registered intellectual property disputes altogether to recognizing full arbitrabilty of all intellectual property disputes.
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