The Arbitration Agreement - Chapter 3 - Arbitration of International Intellectual Property Disputes
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, an associate member of Tanfield Chambers in London (for arbitration matters) and an Adjunct Professor of Law at the Fordham University School of Law where he teaches courses on International Arbitration and on Business Planning for the Entrepreneurial Enterprise. 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 25 years. He is a member of arbitral panels around the world. They include those of the American Arbitration Association, the CPR Institute for Dispute Resolution, the Chartered Institute of Arbitrators, the Singapore International Arbitration 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 the Deputy Chairman of the Board of Management and the Chairman of the Practice and Standards Committee of the Chartered Institute of Arbitrators and has been Chairman of Chartered Institute's Technology Subcommittee and Chairman of the its New York Chapter. He is the Chairman of the Technology Advisory Committee of the American Arbitration Association and 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 Task Force on IT in Arbitration of the ICC Commission on Arbitration.
Mr. Halket holds a law degree from the Columbia University School of Law and bachelors and masters degrees in physics from the Massachusetts Institute of Technology.
Susan H. Nycum is an Attorney who provides arbitration and mediation services in domestic and international IP and technology related disputes (susan@nycum.net). Ms. Nycum was formerly an international partner of Baker & McKenzie and chair of the firm’s North America Intellectual Property (IP) and Information Technology (IT) practice group, a coordinator of the firm’s global IT practice group and a member of the firm’s governing bodies for North America and for Asia Pacific. She has been an advisor to the governments of Brazil, Canada, Finland, Germany, India, Israel, Singapore, Thailand and the United States for IP and IT policy. Ms. Nycum is the former Chair of the ABA section of Science and Technology and former President of the ITECH Law Association. She was the Chair of the International Bar Association committee on software protection and committee on computer crime. She was twice the ABA appointee to the National Conference of Lawyers and Scientists. Ms. Nycum is a member of the IP panel, the Commercial panel and the Large Complex Case panel of the American Arbitration Association, CPR technology and IP panel, fellow of the College of Commercial Arbitrators, fellow of the American Bar Foundation, fellow of the ACM, and member of the National Academy of Distinguished Neutrals. She is listed in the Best Lawyers of America and the Northern California Super Lawyers.
Originally from Arbitration of International Intellectual Property Disputes
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I. Introduction
The arbitration agreement is the foundation of an arbitration. Not only does the agreement to arbitrate provide the legal basis for compelling a reluctant party to arbitrate, it also can set forth the metes and bounds within which the arbitration can take place. A properly drafted arbitration agreement is thus of crucial importance to both the existence and the proper administration of the arbitration.
This chapter considers the more significant issues that are raised in the drafting of an arbitration provision for international intellectual property disputes and provides suggestions for appropriate language. This discussion is generally applicable to both an arbitration clause in an existing agreement between the parties1 and an agreement to submit an existing dispute to arbitration where no agreement to arbitrate has been previously executed,2 such as in disputes between non contracting parties including infringement actions, or where there is no arbitration provision in an existing contractual relationship.
The chapter will discuss the issues to be considered and the choices to be made in drafting of an arbitration clause mainly from the perspective of the intellectual property lawyer or transaction lawyer who is charged with drafting and negotiating the container agreement, the larger transactional agreement that contains the arbitration clause.3 The arbitration clause or set of clauses may be in the body of the transaction document such as a license of intellectual property. It may also be a stand-alone document that is intended to be incorporated by reference into a group of documents that comprise a major transaction, such as a joint venture agreement, a merger or acquisition of corporate assets or an international outsourcing arrangement. The intellectual property addressed can be any type of intellectual property, technology, rights in data and so on. The key is that there is intellectual property in the transaction, and the intellectual property is involved in international trade or business.
I. Introduction
II. Importance of the Arbitration Agreement
III. Preliminary Issues
A. Types of Arbitration Agreements
B. When to Draft the Arbitration Provision
C. Who Should Draft the Arbitration Provision?
D. Sources of Model Agreements
IV. Specific Drafting Issues
A. Multi-step Resolution and Alternative Resolution Mechanisms
B. Selection of the Administrative Body
C. Scope of Disputes to Be Referred to Arbitration
D. Place or Seat of the Arbitration
E. Location of the Hearings
F. The Selection of Arbitrators
G. Language of the Arbitration
H. Choice of the Law
I. Confidentiality and Protection of Trade Secrets
J. Permitted Discovery
K. Matters Relating to the Conduct of the Hearings
L. Allocation of Fees and Costs
M. Sanctions
N. Provisional and Conservancy Measures
O. Limitations on the Bringing of Claims or the Granting of Damages
P. The Award
V. Conclusion