Arbitral Institutions and Arbitration Rules - Chapter 4 - Arbitration of International Intellectual Property Disputes, Second Edition
Sherman Kahn is an arbitrator and represents clients in international arbitrations presenting complex technical and commercial issues. He has arbitrated under the ICC, AAA, ICDR, CPR, JCAA, UNCITRAL and other rules. He has sat as chair, sole arbitrator, and wing arbitrator in international and domestic arbitrations on subjects including IT outsourcing, software development, biotechnology and pharmaceuticals, mining, patent infringement, trademark licensing, unfair competition and trade disparagement, and commercial issues. Mr. Kahn provides advice regarding clause drafting and pre-dispute issues in connection with major construction and infrastructure projects. He is on the International Centre for Dispute Resolution (ICDR) Panel of Arbitrators, the American Arbitration Association Roster of Commercial Arbitrators and the CPR Distinguished Panel of Neutrals and the Korean Commercial Arbitration Board (KCAB) Panel of International Arbitrators. He is a Fellow of the Chartered Institute of Arbitrators (FCIArb) and a member of the Silicon Valley Arbitration and Mediation Center Tech List. He also acts as a mediator. Mr. Kahn has 25 years of experience in patent litigation including matters involving programmable logic devices, microprocessors and controllers, memory devices, construction equipment, medical devices, supercomputers, LCD & PDP display devices, LED Lighting, computer software, networking technologies and biotechnology. He also litigates outsourcing, trade-secret, trademark, copyright, and antitrust matters.
Conna A. Weiner – Arbitrator and mediator Conna Weiner, FCIArb, began her career as a litigator at Paul, Weiss, Rifkind, Wharton & Garrison in New York and then spent over twenty years in-house fielding diverse U.S. and international commercial, regulatory, transactional, IP and litigation issues for global life sciences (pharmaceuticals, medical device, vaccines, diagnostics) and healthcare companies both in the U.S. and abroad, including as a General Counsel with Novartis based in Switzerland and with other industry participants. She is currently with JAMS and continues to arbitrate and mediate complex commercial cases in matters administered through multiple providers such as the ICDR, the American Arbitration Association, the International Institute of Conflict Prevention and Resolution (CPR) (including appointments to its general commercial, biotech, technology and life sciences/healthcare specialty panels), JAMS (international & cross border, commercial, pharmaceuticals/mass torts, IP, healthcare and other panels) and the American Health Lawyers’ Association, as well as ad hoc matters under UNCITRAL and other rules. Ms. Weiner is on the World Intellectual Property Organization Panel of Neutrals and was appointed to the Silicon Valley Arbitration and Mediation Center Tech List (of neutrals with expertise in technology-based disputes) in 2016. She is a graduate of the University of Chicago Law School and Oberlin College. For a detailed description of her background see www.jamsadr.com/weiner.
One of the more important decisions to be made in drafting an arbitration clause is (a) whether an institutional administering body is appropriate to the dispute and if so, which one, and (b) whether the parties should adopt a standardized set of arbitration rules (which are generally subject to modification by the parties) rather than a bespoke process even if they choose not to use an institutional administrator. The same questions arise when preparing a post-dispute arbitration-submission agreement.
It is possible to conduct an arbitration without using an administrative body. Such arbitrations are referred to as “ad hoc” or “non-administered.” Nevertheless, in most cases it is advisable to choose an administering organization. At a minimum, parties can and should consider adopting one of several available standardized non-administered arbitration rules even if they choose not to use an institutional administrator in order to ensure that they cover most, if not all, of the contingencies that may arise in the arbitration.
There are now numerous arbitral institutions around the world, and their numbers are increasing. Some institutions and rules are truly international in their focus; others are more regionally focused. This chapter will discuss a number of the leading arbitral institutions and describe features of their services and rules that may be helpful in deciding whether an institution is appropriate for a particular dispute. The chapter will focus on those procedures that are, or may be, of importance for IP disputes.
III. Arbitral Institutions and Rules
This section of this chapter describes many of the more important arbitral institutions around the world, organized by geographic region, together with the aspects of their rules that have some significance for IP disputes. Although there are many aspects of services, and arbitral rules of these various institutions that have similar effect, there are differences among them too, some of which may be of importance to parties in an international IP transaction. For example, some arbitral institutions have specialized panels of neutrals with backgrounds particularly suited for IP disputes and some do not.
Accordingly, after a general discussion of each organization’s origin, overall structure and geographic scope, this chapter focuses on issues that may be of special importance to IP practitioners, including arbitrator selection, panel composition and compensation and any specialty IP panels; consolidation and joinder; the general conduct of the arbitration; experts; confidentiality, injunctive relief/emergency tribunals and the availability of expedited procedures. The chapter concludes with a discussion of “soft law” resources that parties in international arbitration frequently use to supplement arbitration rules