Arbitration of Intellectual Property Disputes in the United States
Arbitration of Intellectual Property Disputes in the United States examines IP dispute arbitrations where the governing procedural laws are exclusively those of United States federal or state law. Designed to be more than a simple overview on US arbitration, it discusses the possible complications of issues peculiar to IP disputes and identifies topics that impact US IP arbitrations. It covers the major aspects of US arbitrations and examines:
• Significant issues that arise in the drafting of arbitration provisions for IP disputes to be arbitrated under US federal and state lex arbitri with suggestions for appropriate language;
• The choice between ad hoc and administered arbitration, the important arbitral rules in use for IP disputes and the arbitral bodies more commonly encountered for important IP matters;
• Privacy and confidentiality statutory issues, the treatment privacy and confidentiality receive under the rules of various arbitral bodies; the parties’ freedom to contract for confidentiality and limitations on what the parties can achieve;
• The scope of discovery in IP arbitration under the relevant statutes, several leading sets of arbitration rules, and in industry guidance that either the parties themselves or a tribunal may choose to adopt;
• Statutory provisions relating to admissibility of evidence in arbitrations;
• Arbitrators’ application of the rules of privilege;
• Arbitrators’ powers to grant provisional relief, arbitral rule provisions for quick appointment of arbitrators and the parties’ right to seek provisional relief from a court without losing the advantages of arbitration with respect to the merits of the case;
• The forms of relief an arbitrator may award; judicial enforcement of awards in the state and federal courts, and topics of particular relevance to IP disputes such as the effect of an award on patent validity and the requirements of the Patent Act for obtaining confirmation of an award.
Title Page and Detailed T.O.C.
Summary T.O.C.
CHAPTER 1 - Introduction
Thomas D. Halket
CHAPTER 2 - The Arbitration Agreement
Thomas D. Halket
CHAPTER 3 - The Tribunal
Thomas D. Halket
CHAPTER 4 - Arbitral Rules and Administrative Bodies
Thomas D. Halket
CHAPTER 5 - Confidentiality and Privacy
David L. Evans and Theodore J. Folkman
CHAPTER 6 - Discovery
David L. Evans and Theodore J. Folkman
CHAPTER 7 - Evidence
David L. Evans and Theodore J. Folkman
CHAPTER 8 - Emergency Arbitration and Provisional Relief
David L. Evans and Theodore J. Folkman
CHAPTER 9 - Final Remedies and Enforcement
David L. Evans and Theodore J. Folkman
Thomas D. Halket is an attorney practicing in New York. He divides his time between his corporate and commercial technology law practice, his arbitration and mediation work both as counsel and neutral and law school teaching. He is a Partner at Halket Weitz LLP and an Adjunct Professor of Law at the Fordham University School of Law where he teaches courses on International Arbitration, on Licensing and Intellectual Property Transactions, on Commercial Technology and on Entrepreneurship Law. Prior to forming Halket Weitz, he was the Partner in charge of the Commercial Technology Practice in the New York Office of Bingham McCutchen LLP.
A Chartered Arbitrator, Fellow of the Chartered Institute of Arbitrators and Fellow of the College of Commercial Arbitrators, Mr. Halket has been an arbitrator and mediator for over 30 years. He is a member of arbitral panels around the world, including those of the American Arbitration Association, the Chartered Institute of Arbitrators, the Vienna International Arbitral Centre, the Kuala Lumpur Regional Centre for Arbitration, the Hong Kong International Arbitration Centre and the World Intellectual Property Organization. He has served as an arbitrator for the International Chamber of Commerce and is a member of the London Court of International Arbitration. He is a Liveryman of the Worshipful Company of Arbitrators in London, a member of the USCIB Arbitration Committee and member of the International Arbitration Club of New York.
He is the Deputy President of the Chartered Institute of Arbitrators, the Chair of its New York Branch and has been elected to serve as the Chartered Institute’s 2019 President. He was the Chairman of the Technology Advisory Committee of the American Arbitration Association and is a member of the Scottish Arbitration Centre’s Arbitral Appointments Committee. Other positions he has held include Chairman of the Section of Science and Technology of the American Bar Association, Chairman of the Subcommittee on Software and the Uniform Commercial Code of the Association of the Bar of the City of New York and member of the Task Force on IT in Arbitration of the ICC Commission on Arbitration. He acts as an Arbitrator Judge at the Willem C. Vis International Commercial Arbitration Moot Competition.
Mr. Halket is a frequent speaker and writer on topics ranging from alternative dispute resolution to intellectual property and venture capital funded and other early stage companies. He was the editor and contributor to ARBITRATION OF INTERNATIONAL INTELLECTUAL PROPERTY DISPUTES (Thomas D. Halket ed., Juris Publishing, 2012).
Mr. Halket holds a law degree from the Columbia University School of Law and bachelor’s and master’s degrees in physics from the Massachusetts Institute of Technology.
David L. Evans is co-chair of the litigation department at Murphy & King, Professional Corporation, in Boston, Massachusetts. He represents large public corporations, closely held companies and individuals in the resolution of complex business disputes.
Mr. Evans also maintains an active practice as a certified neutral arbitrator and mediator, serving in more than 350 cases. As a neutral, he has presided over a broad range of business disputes involving areas such as intellectual property rights and licenses, finance and accounting, technology development and transfer agreements, stock/asset purchases, energy, biotechnology, medical devices, real estate, private investment firms, and business separations.
Mr. Evans is a member of numerous arbitration and mediation panels, including the Commercial and Large, Complex Case Panels of the American Arbitration Association (AAA), the Panel of Distinguished Neutrals of the International Institute for Conflict Prevention and Resolution (CPR), the International Centre for Dispute Resolution (ICDR) Panel of Arbitrators and Mediators, the ICC International Court of Arbitration (North America), the Court of Arbitration for Sport (CAS) in Switzerland, the London Court of International Arbitration (LCIA), World Intellectual Property Organization (WIPO) and the AAA Master Mediator Panel.
He has been selected as a Massachusetts Super Lawyer in Business Litigation in every year the award has been offered (2006-2018), named a top-rated lawyer in ADR law by The American Lawyer and recognized with an AV Preeminent Peer Rating from Martingdale-Hubbell.
He also serves as a member of the Board of Directors of the American Arbitration Association, and as the co-chair of the Large Case Committee of its Council. For his contributions to the AAA, Mr. Evans received its Outstanding Director Award in 2014.
Theodore J. Folkman is a shareholder of Murphy & King, P.C., in Boston, where he has a complex civil litigation and commercial arbitration practice. He is a member of the commercial and consumer arbitration panels of the American Arbitration Association and has recognized expertise in international judicial assistance and other areas in private international law. Prior to joining Murphy & King, Mr. Folkman was an associate with Hill & Barlow, PC, in Boston, and judicial law clerk to the Hon. Ann Aldrich, U.S. District Judge for the Northern District of Ohio. Mr. Folkman speaks frequently at law schools and bar events on topics of private international law and is the author of several works in this area, including International Judicial Assistance (MCLE, 2d ed. 2016) the chapter on service of process in International Aspects of Litigation: A Practitioner’s Deskbook (ABA 2017), and the chapter on choice of law in The Arbitration of International Intellectual Property Disputes (Juris 2012). Mr. Folkman is a member of the Amicus Committee and former chairman of the Massachusetts Practice and Procedure Committee of the Boston Bar Association, from which he received the President’s Award in 2016. He holds a law degree from Harvard Law School, a master’s degree in political science from Columbia University, and a bachelor’s degree in politics from Princeton University.
Thomas D. Halket is an attorney practicing in New York. He divides his time between his corporate and commercial technology law practice, his arbitration and mediation work both as counsel and neutral and law school teaching. He is a Partner at Halket Weitz LLP and an Adjunct Professor of Law at the Fordham University School of Law where he teaches courses on International Arbitration, on Licensing and Intellectual Property Transactions, on Commercial Technology and on Entrepreneurship Law. Prior to forming Halket Weitz, he was the Partner in charge of the Commercial Technology Practice in the New York Office of Bingham McCutchen LLP.
A Chartered Arbitrator, Fellow of the Chartered Institute of Arbitrators and Fellow of the College of Commercial Arbitrators, Mr. Halket has been an arbitrator and mediator for over 30 years. He is a member of arbitral panels around the world, including those of the American Arbitration Association, the Chartered Institute of Arbitrators, the Vienna International Arbitral Centre, the Kuala Lumpur Regional Centre for Arbitration, the Hong Kong International Arbitration Centre and the World Intellectual Property Organization. He has served as an arbitrator for the International Chamber of Commerce and is a member of the London Court of International Arbitration. He is a Liveryman of the Worshipful Company of Arbitrators in London, a member of the USCIB Arbitration Committee and member of the International Arbitration Club of New York.
He is the Deputy President of the Chartered Institute of Arbitrators, the Chair of its New York Branch and has been elected to serve as the Chartered Institute’s 2019 President. He was the Chairman of the Technology Advisory Committee of the American Arbitration Association and is a member of the Scottish Arbitration Centre’s Arbitral Appointments Committee. Other positions he has held include Chairman of the Section of Science and Technology of the American Bar Association, Chairman of the Subcommittee on Software and the Uniform Commercial Code of the Association of the Bar of the City of New York and member of the Task Force on IT in Arbitration of the ICC Commission on Arbitration. He acts as an Arbitrator Judge at the Willem C. Vis International Commercial Arbitration Moot Competition.
Mr. Halket is a frequent speaker and writer on topics ranging from alternative dispute resolution to intellectual property and venture capital funded and other early stage companies. He was the editor and contributor to ARBITRATION OF INTERNATIONAL INTELLECTUAL PROPERTY DISPUTES (Thomas D. Halket ed., Juris Publishing, 2012).
Mr. Halket holds a law degree from the Columbia University School of Law and bachelor’s and master’s degrees in physics from the Massachusetts Institute of Technology.
David L. Evans is co-chair of the litigation department at Murphy & King, Professional Corporation, in Boston, Massachusetts. He represents large public corporations, closely held companies and individuals in the resolution of complex business disputes.
Mr. Evans also maintains an active practice as a certified neutral arbitrator and mediator, serving in more than 350 cases. As a neutral, he has presided over a broad range of business disputes involving areas such as intellectual property rights and licenses, finance and accounting, technology development and transfer agreements, stock/asset purchases, energy, biotechnology, medical devices, real estate, private investment firms, and business separations.
Mr. Evans is a member of numerous arbitration and mediation panels, including the Commercial and Large, Complex Case Panels of the American Arbitration Association (AAA), the Panel of Distinguished Neutrals of the International Institute for Conflict Prevention and Resolution (CPR), the International Centre for Dispute Resolution (ICDR) Panel of Arbitrators and Mediators, the ICC International Court of Arbitration (North America), the Court of Arbitration for Sport (CAS) in Switzerland, the London Court of International Arbitration (LCIA), World Intellectual Property Organization (WIPO) and the AAA Master Mediator Panel.
He has been selected as a Massachusetts Super Lawyer in Business Litigation in every year the award has been offered (2006-2018), named a top-rated lawyer in ADR law by The American Lawyer and recognized with an AV Preeminent Peer Rating from Martingdale-Hubbell.
He also serves as a member of the Board of Directors of the American Arbitration Association, and as the co-chair of the Large Case Committee of its Council. For his contributions to the AAA, Mr. Evans received its Outstanding Director Award in 2014.
Theodore J. Folkman is a shareholder of Murphy & King, P.C., in Boston, where he has a complex civil litigation and commercial arbitration practice. He is a member of the commercial and consumer arbitration panels of the American Arbitration Association and has recognized expertise in international judicial assistance and other areas in private international law. Prior to joining Murphy & King, Mr. Folkman was an associate with Hill & Barlow, PC, in Boston, and judicial law clerk to the Hon. Ann Aldrich, U.S. District Judge for the Northern District of Ohio. Mr. Folkman speaks frequently at law schools and bar events on topics of private international law and is the author of several works in this area, including International Judicial Assistance (MCLE, 2d ed. 2016) the chapter on service of process in International Aspects of Litigation: A Practitioner’s Deskbook (ABA 2017), and the chapter on choice of law in The Arbitration of International Intellectual Property Disputes (Juris 2012). Mr. Folkman is a member of the Amicus Committee and former chairman of the Massachusetts Practice and Procedure Committee of the Boston Bar Association, from which he received the President’s Award in 2016. He holds a law degree from Harvard Law School, a master’s degree in political science from Columbia University, and a bachelor’s degree in politics from Princeton University.
Title Page and Detailed T.O.C.
Summary T.O.C.
CHAPTER 1 - Introduction
Thomas D. Halket
CHAPTER 2 - The Arbitration Agreement
Thomas D. Halket
CHAPTER 3 - The Tribunal
Thomas D. Halket
CHAPTER 4 - Arbitral Rules and Administrative Bodies
Thomas D. Halket
CHAPTER 5 - Confidentiality and Privacy
David L. Evans and Theodore J. Folkman
CHAPTER 6 - Discovery
David L. Evans and Theodore J. Folkman
CHAPTER 7 - Evidence
David L. Evans and Theodore J. Folkman
CHAPTER 8 - Emergency Arbitration and Provisional Relief
David L. Evans and Theodore J. Folkman
CHAPTER 9 - Final Remedies and Enforcement
David L. Evans and Theodore J. Folkman