Preliminary and Final Remedies - Chapter 10 -Arbitration of International Intellectual Property Disputes, Second Edition

David Herrington is a partner based in Cleary Gottlieb’s New York office. His practice and experience span a wide range of litigation, advisory, and regulatory matters, with a focus on intellectual property disputes. He has handled multiple suits involving claims of patent infringement, trade secret misappropriation, trademark infringement, and copyright infringement, as well as disputes concerning IP licenses. He also counsels on IP issues in the transactional context, including licensing, M&A and capital markets transactions, the sale of patent portfolios, and other matters. Mr. Herrington has conducted a number of IP suits through trial and appeal. He also has successfully represented clients in international arbitrations, including IP-related international arbitrations pursuant to the ICC, LCIA and ICDR rules. He has been recognized by Benchmark Litigation as a “Litigation Star.”

Alexandra Theobald is an associate based in Cleary Gottlieb’s New York office. Her practice focuses on litigation and arbitration. She has advised on matters involving copyrights, trademarks, patentability and patent licensing issues. She also counsels on IP and Cybersecurity issues in the transactional context, including licensing, DMCA compliance, claims of patent infringement, trade secret misappropriation, trademark infringement, and copyright infringement. She has experience arbitrating pursuant to the LCIA rules, and is a member of the ICCA.

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Originally from Arbitration of International Intellectual Property Disputes, Second Edition

I. Introduction

Parties are naturally concerned with the remedies available in an arbitration—including both the nature and the timing of relief. This is true, regardless of whether they are the claimant or the respondent. The concerns vary depending on the nature of the dispute. Money damages awarded at the end of the arbitration are a sufficient remedy for many commercial disputes. That is not true for many IP disputes, namely where there is unpermitted use of IP or threatened disclosure of trade secrets. For such disputes, equitable relief will likely be necessary, and preliminary relief well in advance of the final award is likely to be needed as well.

Accordingly, for a consideration of damages and other relief available in arbitrations for international IP disputes, it is helpful to distinguish between preliminary measures (including emergency relief) and final relief. Preliminary relief —including “interim measures” issued by an arbitrator and “provisional relief” issued by a court—may be granted at any point before the final award, possibly before the tribunal is even formed. Final relief—ordinarily in the form of the final award—embodies the ultimate decision that brings the arbitral proceeding to a close and ordinarily addresses all issues and claims asserted by the parties.

This chapter’s first section focuses on the role of preliminary measures in the arbitration of an IP dispute, issued either by the tribunal or a court. The second section addresses damages and injunctive relief available in a final award.