The Rules of Selected Administrative Bodies Relevant to Intellectual Property Disputes - Chapter 4 - Arbitration of International Intellectual Property Disputes

Frank L. Politano is a Partner in the Newark office of K&L Gates LLP. Mr. Politano has over 35 years of intellectual property law experience, including global experience in brand, technology, copyright and software licensing. He provides counsel to clients with respect to a variety of intellectual property matters. He also advises clients in valuing intellectual property, as well as performing due diligence with respect to intellectual property rights involved in merger and acquisition transactions. Another area of his experience relates to counseling standards-setting organizations on a wide spectrum of legal issues. Mr. Politano has represented clients in numerous federal and state litigations concerning trademark and service mark infringement, patent infringement and validity, interpretation of licensing contracts, and general unfair competition matters. He has also worked in an advisory role in several intellectual property suits in Canada, Germany and the United Kingdom. Prior to joining K&L Gates, Mr. Politano was in-house counsel at AT&T and before that he practiced intellectual property law in New York City at Kaye, Scholer and later Fish & Neave. He is an Adjunct Professor of Law at Seton Hall University School of Law, Newark, New Jersey and co-editor of Drafting License Agreements. Mr. Politano is a graduate of Boston University’s College of Arts & Sciences and Columbia Law School.

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Originally from Arbitration of International Intellectual Property Disputes

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I. Introduction

All dispute resolution administrative bodies provide procedures, and some provide neutrals and facilities, which can be used for the non-government, consensual resolution of IP disputes. This chapter examines the arbitral rules of the major dispute resolution administrative bodies, more particularly, specific aspects of those rules that are likely of special concern to IP disputes: privacy and confidentiality protections, interim measures, the existence of expedited proceedings, special discovery rules, the availability of specialized arbitrators and mediators and the ability to use subject matter experts. Some of these bodies of rules are custom tailored for IP disputes. Others are of general applicability and can be used for all or most arbitrations regardless of subject matter, but could be adopted for IP disputes.

This chapter first reviews the elements of any dispute resolution procedure that may prove important to the resolution of IP disputes. There may be advantages to using custom tailored rules over the procedures set by administrative bodies.2 It will then review about a dozen sets of rules of different administrative bodies and focus on the ability to use those rules in IP disputes. It will begin with IP-centric rules and then review other rules which may be useful for IP disputes. Finally, it will provide a list of recommendations IP practitioners should consider in selecting dispute resolution rules. A more exhaustive comparison of selected arbitration rules is set forth in a table in the Appendix to this book.

A point to be emphasized is that the rules of most of the administrative bodies are flexible. They allow the parties to vary many of them by agreement. The written dispute resolution procedures should be looked upon as a set of "default" rules that can be readily modified by the parties to include specialized IP provisions.3

Table of Contents:

I. Introduction

II. Important Factors in Selecting a Dispute Resolution Provider
A. Preliminary Injunctive Relief
B. Confidentiality and Privacy
C. Adjudicators with Subject Matter Experience
D. Discovery

III. Advantages and Disadvantages of Administered Arbitration

IV. Overview of Administrative Body Rules
A. World Intellectual Property Organization
B. Internet Corporation for Assigned Names and Numbers Rules

V. Supplemental Rules
A. The American Arbitration Association
B. International Institute for Conflict Prevention and Resolution
C. The International Chamber of Commerce
D. JAMS
E. The United Nations Commission on International Trade Law
F. The London Court of International Arbitration
G. The Singapore International Arbitration Centre
H. Other Arbitral Centers

VI. Conclusion