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Provisional and Final Remedies - Chapter 10 - Arbitration of International Intellectual Property Disputes

Author(s): 
John Fellas
Benjamin Thompson
Page Count: 
34 pages
Media Description: 
PDF from "Arbitration of International Intellectual Property Disputes"
Published: 
May, 2012
Jurisdictions: 
International
Practice Areas: 
Rights Pertaining to the Conduct of Proceedings,
Intellectual Property,
Relief and Remedies in General,
Payment of Money, Foreign Currency,
Costs and Damages,
Arbitration Fees,
Judicial Granting of Interim Relief,
Stay of Court Proceedings Pending Arbitration,
ICC,
SIAC,
WIPO,
AAA,
ICDR,
LCIA,
FAA,
New York Convention,
UNCITRAL Model Law
Author Detail: 

John Fellas is a Partner in the New York office of Hughes Hubbard & Reed LLP, practicing in the fields of international litigation and arbitration. Mr. Fellas has practiced in both the U.S. and England, and as well as being a member of the New York Bar, he is also a Solicitor of the Supreme Court of England and Wales. He has served as counsel, and as chair, sole arbitrator and co-arbitrator, in arbitrations under the AAA, ICC and ad hoc rules. He also serves on the Mediation Panel of the District Court for the Southern District of New York. He has also been retained to act as an expert witness on U.S. law in proceedings in other countries. He has been recognized for his practice in international arbitration by: Who's Who Legal--The International Who's Who of Business Lawyers (International Arbitration); Chambers USA--Guide to America's Leading Business Lawyers (International Arbitration); Chambers Global (International Arbitration); The Best Lawyers in America (International Arbitration). In February 2006, Global Arbitration Review identified Mr. Fellas as one of 45 leading international arbitration practitioners under the age of 45. He has also been recognized for his practice in commercial litigation by: Who's Who Legal--The International Who's Who of Business Lawyers (Commercial Litigation); New York Super Lawyers (Business Litigation). He is also listed in: Who's Who in American Law (Marquis); Who's Who in The East (Marquis). He was co-editor of International Commercial Arbitration in New York (Oxford University Press, 2010) and he received a B.A. (Hons.) from the University of Durham, England, and both an LL.M. and an S.J.D. from the Harvard Law School.

Benjamin S. Thompson is an Attorney in the New York office of Hughes Hubbard & Reed LLP, practicing in various litigation, corporate, and intellectual property matters. He received a B.S. from Texas A&M University, and a J.D. from the Benjamin N. Cardozo School of Law, where he was Editor-in-Chief of the Cardozo Journal of Conflict Resolution. Mr. Thompson has written and published other articles on international arbitration.

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Originally from Arbitration of International Intellectual Property Disputes

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I. Introduction

It is easiest to discuss relief and damages by separating interim and final relief. Interim relief, or preliminary relief, is relief that is granted at any point before the final award is rendered.1 This may occur before the tribunal is even formed. Final relief reflects the ultimate decision by the tribunal that brings the arbitral proceeding to a close, and usually will have addressed all issues and claims asserted by the parties.

The first section of this chapter focuses on the role of preliminary relief in the arbitration of an IP dispute, issued either by the court or the tribunal. The second section will address the damages and injunctive relief that may be available from the tribunal in a final award.

II. Preliminary Relief in Intellectual Property Arbitration

In intellectual property disputes, the need for immediate relief is often greater than in other commercial matters. If infringement is occurring, if trade secrets are being exposed, or if one party is using another’s IP without the right to do so, the owner of the IP in question will want the conduct to cease instantly. The need for such relief may therefore be critical in the early stages of an arbitral proceeding, and a party to an IP arbitration, if seeking preliminary relief, must consider several questions. Is the preliminary relief it needs the type of relief that may be granted? What procedures are available from the tribunal to grant preliminary relief? Is it limited to seeking such relief only from the arbitral tribunal, or may it also seek relief from a national court? What will that party have to establish to obtain a preliminary remedy? Particularly in the international context, what obstacles will it have to overcome to compel compliance with any interim relief that it did obtain?

Fortunately, the law of most major commercial nations and the rules of all of the most important arbitral institutions do provide various means for obtaining preliminary relief through the tribunal. Some arbitral institutions provide measures for emergency relief, measures which essentially allow a party to petition for, and obtain, preliminary relief substantially faster than it would be able to do if it could only obtain such relief from the tribunal charged with deciding the dispute as a whole.

Table of Contents: 

I. Introduction

II. Preliminary Relief in Intellectual Property Arbitration 
A. Available Preliminary Relief 
B. The Scope of the Power of an Arbitral Tribunal to Grant Preliminary Relief
C. Court-ordered Preliminary Relief Pending Arbitration 
D. Requirements for a Grant of Preliminary Relief 
E. Special Issues Arising in International Intellectual Property Disputes 

III. Final Remedies in Intellectual Property Arbitration 
A. Injunctive and Declaratory Relief 
B. Money Damages 
C. Costs of Arbitration 

IV. Conclusion