The author is the chairman of the ADR Committee of the American Intellectual Property Law Association and a partner at the New York firm of Fish & Neave. This article is an updated and revised version of a longer paper presented at the Worldwide Forum on the Arbitration of Intellectual Property Disputes, held in Geneva.
In the absence of contract language to the contrary, all intellectual property issues appear to be the proper subject of binding arbitration in the United States.
This article will discuss such subjects as patents, copyrights, trademarks and federal antitrust and securities laws pertaining to these issues.
Until 1983, U.S. courts generally refused to order binding arbitration of issues as to patent validity and enforceability. Such patent law issues were said to be "inappropriate for arbitration proceedings and should be decided by a court of law, given the great public interest in challenging invalid patents." 1 However, with the enactment of 35 U.S.C. § 294 (effective February 27, 1983), the arbitrability of patent disputes under U.S. law is no longer in question on this ground. Voluntary, binding arbitration of patent validity, enforceability and infringement is expressly provided for in Section 294.