The Arbitration Agreement - Chapter 2 - 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.

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Originally from Arbitration of Intellectual Property Disputes in the United States

I. Introduction

Arbitration under United States arbitral law is largely consensual, namely the parties must have agreed to arbitrate their dispute in order for it to proceed to arbitration. Accordingly, the arbitration agreement provides the legal basis for compelling a reluctant party to arbitrate. But it is more than that; it also can set forth the metes and bounds within which the arbitration will take place. Indeed, the importance of the arbitration agreement is fourfold: namely, (1) it sets forth the means of settling a possible dispute and thus helps the drafting parties to focus on the implementation of the underlying transaction so as to prevent or minimize negative results; (2) it serves as a roadmap for the dispute resolution process; (3) it fixes the parameters of the arbitrators’ powers to resolve the dispute and (4) it sets the jurisdictional basis for resolution of the dispute and enforcement of the award.

This chapter considers a number of the more significant issues that arise in the drafting of an arbitration provision for IP disputes that are to be arbitrated under United States federal and state lex arbitri and provides some suggestions for appropriate language. This discussion is generally applicable to both an arbitration clause in an existing agreement and an agreement to submit an existing dispute to arbitration where no agreement to arbitrate has been previously executed. Regardless of the nature of the dispute, however, the issues raised in submission agreements for handling existing disputes are, for the most part, not substantially different from those raised in arbitration agreements for possible future disputes.