Arbitral Rules and Administrative Bodies - Chapter 4 - Arbitration of Intellectual Property Disputes in the United States
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.
An arbitration may proceed under United States federal and/or state lex arbitri whether or not the parties have agreed to the applicability of a particular set of rules and whether or not the parties have agreed that the arbitration be administered by a specific arbitral body (such as the AAA, ICC, CPR or JAMS) or be ad hoc. These choices, nevertheless, may, indeed probably will, have a significant effect on the conduct and cost of the arbitration and will likely impact the parties’ perception of the efficacy of the arbitral process. An ad hoc process may well be the right choice for a particular dispute, but it is also true that an administrative body brings a certain amount of control to the arbitral process, eliminating or limiting potential problems. And while there are significant similarities among many, but not all of, the various sets of rules in common use in arbitrations seated in the United States, there are differences too, some of which may be particularly pertinent to an IP dispute.
This chapter will examine the choice between ad hoc and administered arbitration as well as provide an overview of the more important arbitral rules in use for IP disputes in the United States, as they pertain to issues of importance to IP matters, and the arbitral bodies more commonly encountered for those matters. The most commonly encountered arbitral bodies in the United States for IP matters are the AAA and its international division, the ICDR, and to varying lesser extents the ICC, JAMS, CPR and WIPO. Each body has one or more sets of general rules that can be used for IP disputes; the UNCITRAL Rules are one of the sets of rules available for use in an ad hoc arbitration. Finally, the are several sets of rules that pertain only to specific types of IP disputes.