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Published online by Cambridge University Press: 17 February 2009
Intellectual property can have enormous value and is often an important asset on a company's balance sheet. As intellectual property plays an everincreasing role in the world economy, disputes over intellectual property ownership, validity, licensing, infringement etc. are also likely to become more frequent. Parties of different nationalities will inevitably be involved in these disputes and so international arbitration will increasingly provide an attractive option for intellectual property dispute resolution. The aim of this paper is to give a brief overview of the benefits of taking intellectual property disputes to arbitration as opposed to having them decided in the courts, to explain some of the difficulties of arbitrating intellectual property questions and to introduce some of the features of the Arbitration Rules adopted by the World Intellectual Property Organisation that are especially useful in arbitration proceedings
1 For more information on WIPO and the activities of the Arbitration and Mediation Center see http://www.wipo.org>.
2 See, for example, the comment of Jan, Paulsson in “Fast Track Arbitration in Europe (with special reference to the WIPO Expedited Arbitration Rules)”, 18 Hastings International and Comparative Law Review (1995) p. 713, at p. 715Google Scholar: “WIPO Expedited Arbitration may well turn out to be heralded by critics only to ‘fail at the box office’.“
3 Mediation of intellectual property disputes is beyond the scope of this article but may be a highly effective way to resolve differences between the parties.
4 This information has been provided by the WIPO Center and is up-to-date as at 2 September 2002. The Center advises that it fully expects to administer ever-increasing numbers of arbitrations.
5 See Francis, Gurry, “Objective Arbitrability - Intellectual Property Disputes”, in: A Collection of Reports and Materials Delivered at the ASA [Swiss Arbitration Association] Conference held in Zurich on 19 November 1993, ASA Special Series No. 6 (1994) p. 110.Google Scholar
6 See Bharat Dube, “The Experience of the Cartier Group”, ibid., at p. 175. Cartier takes the view that arbitration and other “friendly forms of dispute resolution” are not appropriate for dealing with counterfeiting of Cartier's designs. One of the reasons for bringing counterfeit cases to court rather than to arbitration is the public, open nature of court proceedings and the deterrent effect that this has.
7 For example, the Patents Court of the High Court of Justice (England & Wales) Chancery Division has jurisdiction to hear disputes concerning patents and registered designs. The judges of the Patents Court have substantial technical knowledge and a large amount of experience in deciding intellectual property disputes.
8 See Alessandro, Celli, Internationales Kennzeichenrecht (Beck 2000) at pp. 291 et seq.Google Scholar
9 See the ICC Commission on International Arbitration, “Final Report on Intellectual Property Disputes and Arbitration”, in: 9/1 ICC International Court of Arbitration Bulletin (1998) at pp. 41–45.Google Scholar
10 For a full discussion of arbitrability in the context of intellectual property disputes see Marc, Blessing, “Arbitrability of Intellectual Property Disputes”, 12/2Arbitration International (1996) at pp. 191 et seq.Google Scholar
11 The only exceptions are for (i) disputes over the registration process, which is an administrative process run by the State; (ii) disputes over compulsory licenses; and (iii) disputes concerning the expropriation of intellectual property rights by the State. Kamen Trailer, “Specific Aspects of Intellectual Property Disputes in Arbitration: the Swiss Perspective”, in: supra n. 5, at p. 160.
12 The Eidgenössisches Institut für Geistiges Eigentum (or Institute for Intellectual Property) is responsible for all intellectual property matters in Switzerland. For more information see http://www.ige.ch>.
13 Article 177 of Switzerland's Federal Code on Private International Law, commonly know as CPIL, provides that all pecuniary claims may be submitted to arbitration. Cf. the position in Germany where the same wording is applied to issues of arbitrability but, as noted above, only those disputes concerning rights which the parties are free to dispose of are considered to be arbitrable. For more discussion of this point see Daniel, Simms,“Arbitrability of IP Disputes in Germany”, 15/2Arbitration International (1999) at p. 193.Google Scholar
14 Celli, supra n. 8, at p. 293.
15 For further discussion of this point see Bernard, Hanotiau, “What Law Governs the Issue of Arbitrability?” 12/4Arbitration International (1996) at p. 391.Google Scholar
16 See Alan, Redfern and Martin, Hunter, Law and Practice of International Commercial Arbitration, 3rd ed. (Sweet & Maxwell 1999) at p. 132.Google Scholar
17 The 1958 New York Convention, which has now been adopted in 122 countries, facilitates the enforcement of foreign arbitral awards, but in approximately 10% of the cases under the New York Convention, enforcement of an award is refused. Quoting Albeit Jan, van den Berg, “Refusals of Enforcement under the New York Convention of 1958: the Unfortunate Few”, in: Arbitration in the Next Decade: a special supplement of the ICC International Court of Arbitration Bulletin (1999) at pp. 75 et seq.Google Scholar
18 Marc Blessing, supra n. 10, at pp. 194-5.
19 The Center was not set up to deal only with intellectual property disputes: it will administer arbitration proceedings concerning any dispute regardless of whether intellectual property rights are involved.
20 The list of neutrals is not available to the public as such but, on request and payment of a fee, the Center will make available the profiles of suitable candidates to act as neutrals. For more information see <http://arbiter.wipo.int/neutrals>.
21 These provisions of the WIPO Rules are, in fact, largely based on the UNCITRAL Arbitration Rules. See Kathleen, Paisley, “Commencement of the Arbitration and Conduct of the Arbitration (Articles 6 to 13, Articles 37 and 38, Articles 41 to 45; Articles 47 to 51; Articles 53 to 58)”, in: WIPO Arbitration Rules: Commentary and Analysis (2000) p. 107 at pp. 147 et seq.Google Scholar
22 Article 55(a) of the WIPO Rules.
23 The London Court of International Arbitration Rules (Article 22.1 (d)) also cover orders for site visits but not the procedure by which the parties may request the tribunal to make such site visits. See <http://www.lcia-arbitration.com> for more information.
24 This topic is further discussed by Hans Smit, supra n. 21, at pp. 233 et seq.
25 London Court of International Arbitration Rules, Article 30; International Chamber of Commerce Rules of Arbitration, Article 20(7); American Arbitration Association International Arbitration Rules, Article 34.
26 See Hans Smit, supra n. 21, at p. 244.
27 See commentary by Hans Smit, supra n. 21, at pp. 233 et seq.
28 Services of the WIPO Arbitration Center (WIPO publication no. 445 (E)) (1994) at p. 32.Google Scholar
29 Article 176 of the Swiss Federal Code on Private International Law (CPIL).
30 This decision is discussed by Marc Blessing, supra n. 10, at pp. 217-219.
31 Extracts of this interim award are reported in the 11/1 ICC International Court of Arbitration Bulletin (2000) at pp. 94–98.Google Scholar
32 Reported in the UNIDROIT database of international case law relating to the UNIDROIT Principles of International Commercial Contracts, accessible at <http://www.unilex.info>.