Arbitrability of Intellectual Property Disputes - Chapter 2 - Arbitration of International Intellectual Property Disputes
Steven A. Certilman, FCIArb, is an Attorney and Commercial Arbitrator and Mediator based in New York, New York and Stamford, Connecticut, specializing in the arbitration and mediation of domestic and international information technology, intellectual property and licensing disputes. He is a frequent author, speaker and trainer in the ADR field, an adjunct professor of law at Fordham University School of Law in New York City and a past chairman of the Board of Trustees of the Chartered Institute of Arbitrators. Mr. Certilman is a Chartered Arbitrator and serves on the arbitration and mediation panels of many dispute resolution organizations including the AAA, CPR, HKIAC, SIAC, KLRCA and FINRA.
Joel E. Lutzker is General Counsel of intellectual property merchant banking firm Ocean Tomo, LLC. Mr. Lutzker has over 30 years of experience in patent litigation, arbitration and transactions. After over two decades with the New York intellectual property boutique of Amster, Rothstein & Ebenstein, in 2001, Mr. Lutzker joined the New York firm of Schulte, Roth & Zabel to start and head the firm's intellectual property department. Most recently prior to joining Ocean Tomo, Mr. Lutzker was the head of the New York intellectual property group of Sheppard, Mullin, Richter & Hampton. Mr. Lutzker has been first chair litigation counsel in patent cases in federal district courts throughout the country, has argued on numerous occasions before the United States Court of Appeals for the Federal Circuit, and has been principal counsel and author of several amicus briefs on significant patent cases before the United States Supreme Court. Mr. Lutzker has also served as both an arbitrator and counsel in arbitrated intellectual property disputes. Mr. Lutzker has also represented companies in handling the intellectual property aspects of major M&A transactions as well as numerous licensing and patent acquisition transactions. While at Schulte Roth, Mr. Lutzker was heavily involved in the representation of hedge funds and other financial services institutions with regard to intellectual property issues. Mr. Lutzker also has placed significant focus on international intellectual property issues including U.S./Europe and U.S./Asian (primarily Japan and China) litigation and transactions. He is a member of the bar of New York, Connecticut, the United States Patent and Trademark Office and numerous federal courts across the country. Mr. Lutzker is a graduate of the New York University School of Law and has a B.A. in Physics from New York University, University College of Arts and Science. He is a frequent speaker on patent litigation and licensing topics and is the author of numerous articles.
Originally from Arbitration of International Intellectual Property Disputes
Without a doubt, it would be a frustrating experience if one were to spend months preparing to arbitrate an IP claim, completing discovery and the hearings and obtaining a favorable award, only to find that the award was unenforceable and one’s path to recovery blocked. In this light, one can easily appreciate the strategic importance of the issue of arbitrability—namely the issue of whether or not applicable law permits the matter in question to be resolved through arbitration.
At the heart of the arbitration process, indeed its legal foundation, is the agreement of the parties to arbitrate. This gateway prerequisite to successful use of the arbitration process evolves from the strong and widely held policy of granting deference to the right of parties to establish by contract the terms under which they agree to do business -- a policy known as party autonomy. It is a core principle behind the evolution and popularity of international arbitration, and all legal systems recognize to a reasonable degree the right of parties to establish the terms of their business dealings. Nevertheless, the degree of state recognition of party autonomy is nowhere unlimited, and typically its outer boundaries are broadly defined by conflict with the public interest. There is an inextricable tension between a state’s grant of party autonomy and its public interest in certain types of disputes. That tension is essentially a zero sum concern, with the underlying "fault line" between what may and may not be arbitrable being largely dependent on the nature and/or subject matter of the dispute in question. In this context, the question of whether a dispute may bearbitrable will usually be of more concern in an international IP arbitration than in a general commercial one.1
II. The Impact of Arbitrability
A. What is Arbitrability?
B. The Significance of Arbitrability for Intellectual Property Disputes
C. The Adjudication of Arbitrability
III. Arbitrability Issues Arising in IP Disputes
A. Validity Claims
B. Antitrust Issues
C. Criminal Conduct
D. Export Controls and other Trade Restrictions
E. Other Disputes
IV. Country Survey
A. United States of America
B. United Kingdom
F. People's Republic of China