The Arbitration Agreement - Chapter 3 - Arbitration of International Intellectual Property Disputes, Second Edition
Thomas Halket practices law in the State of New York, dividing 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 an Adjunct Professor of Law at the Fordham University School of Law where he teaches courses on International Arbitration, on Licensing, on Commercial Technology and IP Transactions and on Entrepreneurship Law. Earlier in his career, he was the partner in charge of the Commercial Technology Practice in the New York Office of Bingham McCutchen LLP. Prior to that he was a partner and co-chair of the Technology and the Emerging Company Group of Hughes, Hubbard & Reed.
A Chartered Arbitrator, Fellow of the Chartered Institute of Arbitrators, GAR listed arbitrator, on "Tech List" of distinguished arbitrators of the Silicon Valley Arbitration and Mediation Center, member of the National Academy of Distinguished Neutrals and of the IDR Group and Fellow of the College of Commercial Arbitrators, he has been an arbitrator and mediator for over 30 years. He is listed on arbitral panels around the world. Although Mr. Halket has acted as a neutral for a wide variety of domestic and international disputes, he specializes in intellectual property and technology related matters. He is a member of the Scottish Arbitration Centre’s Arbitral Appointments Committee, a Liveryman of the Worshipful Company of Arbitrators in London, a member of the USCIB Arbitration Committee, a member of the LCIA and member of the International Arbitration Club of New York.
Among other positions with professional organizations he has held, he was the 2019 President of the Chartered Institute of Arbitrators, Chair of the Technology Advisory Committee of the American Arbitration Association, Chair of the Section of Science and Technology of the American Bar Association, Chair of the Subcommittee on Software and the Uniform Commercial Code of the New York City Bar Association and member of Task Force on IT in Arbitration of the ICC Commission on Arbitration. A frequent author and speaker, in addition to this book he is a co-author of a book on the arbitration of IP disputes in the United States. 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.
Maria Chedid is a Partner at Arnold & Porter LLP, where she leads the firm’s international arbitration practice in the Western United States. She serves as lead counsel in both commercial and investment arbitrations, sits as an arbitrator, and has over twenty-five years of experience with arbitrations administered by all major arbitral institutions including the ICC, ICDR, SIAC, LCIA, ICSID, DIAC, CPR, JAMS, AAA, UNCC, and the Iran-US Claims Tribunal. She is one of the two US members of the International Court of Arbitration of the International Chamber of Commerce (ICC); co-chair of the AAA/ICDR Global Working Group on Technology and Life Sciences Arbitration; co-chair of the AAA/ICDR California Advisory Committee; a US member of the National Committee for the Singapore International Arbitration Centre (SIAC) Users Council; an Officer of the London Court of International Arbitration (LCIA) North American Users’ Council; and the founding president and co-chair of the Board of Directors of the California International Arbitration Council (CIAC). Ms. Chedid has been recognized for her arbitration expertise in Chambers USA, Chambers Global, The Legal 500 US, Super Lawyers, and Euromoney's Guide to the World's Leading Experts. She has twice been a recipient of California's Top Women Lawyers of the Year award, in recognition of her exemplary advocacy on behalf of clients as well as her trailblazing work in international arbitration, and has consistently been named to the Silicon Valley Arbitration & Mediation Center’s “Tech List” of the World’s Leading Technology Arbitrators. She is a regular speaker on international dispute resolution and advocacy at conferences worldwide and guest-lectures at numerous law schools, including Stanford Law School, UC Berkeley School of Law, Columbia Law School and the Straus Institute for Dispute Resolution at Pepperdine Law School, where she has taught as an adjunct professor. Ms. Chedid is originally from Lebanon and is a native Arabic speaker.
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 IP disputes and provides suggestions for appropriate language. This discussion is generally applicable to both an arbitration clause in an existing agreement between the parties and an agreement to submit an existing dispute to arbitration where no agreement to arbitrate has been previously executed, 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 IP lawyer or transactional lawyer who is charged with drafting and negotiating the container agreement, the larger transactional agreement that contains the arbitration clause. The arbitration clause or set of clauses may be in the body of the transaction document such as an IP license. 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 IP addressed can be any type of IP, technology, rights in data and so on. The key is that there is IP in the transaction, and the IP is in international trade or business.
Practitioners who are new to IP arbitration may, and probably will, find material and approaches that are different from their domestic commercial arbitration as international arbitration is designed to resolve disputes when the parties may come from different legal regimes with disparate languages, different cultures and different national laws. Nevertheless, many, if not most, of the considerations discussed in this chapter also have applicability to IP disputes that are wholly domestic, although that scope of the applicability may depend on the country in question. All practitioners are reminded that many arbitral institutions also provide suggested language for arbitration clauses—language that may have been developed to work with the rules of the institution in question—and that organizations such as the IBA offer general suggested language too.