Enforceability - Chapter 11 - Arbitration of International Intellectual Property Disputes

Thierry Calame is Partner and Head of Intellectual Property in the Zurich Office of the Swiss law firm Lenz & Staehelin. He is an expert in intellectual property matters, with a particular emphasis on technology and patent related disputes. Mr. Calame has acted as counsel and arbitrator in numerous technology and intellectual property related arbitration proceedings, notably under ICC Rules and Swiss Rules. In addition, he has vast experience as counsel in intellectual property and unfair competition litigation before Swiss courts and advises on licensing, the intellectual property aspects of a wide range of other transactions and pharmaceutical law, including regulatory and advertising issues. Mr. Calame holds a masters degree in chemistry from the Swiss Institute of Technology (ETHZ) and a doctorate in law from the University of St. Gallen. He is a permanent lecturer at the University of St. Gallen and the Reporter General of the International Association for the Protection of Intellectual Property (AIPPI).

Dr. Martin Aebi is an Arbitration Counsel in the Zurich Office of the Swiss law firm Lenz & Staehelin. His practice focuses on international commercial arbitration, with an emphasis on technology and intellectual property related disputes such as licensing and jointdevelopment issues. He has acted as counsel in a wide variety of proceedings under the ICC Rules, Swiss Rules, Vienna Rules and in ad hoc arbitration. Dr. Aebi is a graduate of the University of St. Gallen (lic. iur. 1999, Dr. iur. 2005--scholar of the Swiss national research foundation). He obtained an LL.M. degree at Columbia Law School in 2005 (Fulbright scholar). In addition to his arbitration practice, he has extensive experience as counsel in intellectual property and unfair competition litigation before Swiss courts, as well as in administrative proceedings before national TV-broadcasting supervisory authorities.

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Originally from Arbitration of International Intellectual Property Disputes

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I. Introduction

If the losing party does not voluntarily comply with an arbitral award, once it is rendered, the award must be enforced to be effective. Alternatively, if the losing party believes that the award was rendered contrary to applicable law, it may either oppose enforcement or seek to have the award set aside.1 The mechanisms to enforce awards, on the one hand, or to vacate them, on the other, will thus in many disputes be of real concern to the parties. This is particularly true in international IP disputes where it is often of crucial importance that orders for permanent relief – including orders to do something or to refrain from doing something – must be enforceable in one or more jurisdictions without undue delay or obstruction.

There are, however, real differences between an enforcement proceeding and one for vacatur. For a start, the results of the two procedures are different. An award which is vacated will be deemed a nullity--i.e. it ceases to be an effective award--in most jurisdictions around the world.2 A denial of recognition and enforcement usually renders the award unenforceable only in the country in question and does not affect its force or effect in any other country. Also of importance is that while recognition and enforcement proceedings usually can be brought in any country with jurisdiction over the losing party or the subject matter of the dispute, a proceeding for vacatur can only be brought in the country in which the arbitration was seated. Lastly, the grounds for each can be significantly different. Vacatur is governed by the national arbitration law of the seat, while enforcement, outside the seat, is governed in the first instance by the New York Convention, at least in those countries which are signatories to it.3

The grounds for vacatur therefore can and do vary from country to country and a treatment would go beyond the scope of this book.4 Conversely, the grounds for denial of enforcement of a foreign award--that is, enforcement of an award in a country other than the seat of the arbitration--are determined and constrained by the New York Convention. Thus, the same minimum standards exist in the many signatory countries.

Table of Contents:

I. Introduction

II. The New York Convention
A. Scope of Application of the New York Convention--"Foreign" Arbitral Awards
B. Proof of Existence of an International Arbitral Award
C. Procedure for Obtaining Recognition and Enforcement of International Arbitral Awards
D. Refusal of Recognition and Enforcement

III. Recognition and Enforcement of Awards Providing for Specific Performance or Permanent Injunctions

IV. Enforceability of Interim Measures

V. The Preclusive Effect (Res Judicata or Related Principles) of International Arbitral Awards

VI. The Duty of Arbitrators to Render Enforceable Awards

VII. Conclusion