Confidentiality and Privacy - Chapter 5 - 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.
When the state administers justice, the proceedings are, with limited exceptions, neither private nor confidential. In the United States, the First Amendment protects the public’s presumptive right to have access to, and to report on, what happens in civil proceedings in courts, and on the transcripts and other records concerning the proceedings. The common law also protects the public’s right of access to judicial proceedings. And in the absence of a special rule or a decision by the court to override the presumptive openness of proceedings, the public is free to attend all proceedings and read the papers filed with the court, and the parties to a dispute are free to discuss the dispute in public if they choose.
These general rules applicable in court can run counter to the needs or desires of parties to a dispute. Parties often want to have their dispute resolved in a confidential way, and they often want to exclude non-parties from attending the proceedings or reading the documents submitted to the dispute resolver. This is particularly so for IP disputes. If the dispute involves trade secrets, then it is of course essential to the party asserting the trade secret that the secret not be made public – trade secrets derive their value from their secrecy. Even if the dispute involves a patent, which is necessarily public, highly confidential evidence may sometimes have to be presented at the hearing. For example, in order to know whether an accused computer or telecommunications product infringes a patent, it may be necessary for the finder of fact to examine highly confidential source code. Similarly, in any dispute over the amount of royalties due under a license, the amount of sales of the product in question by the licensee will be at issue, and, as in other business disputes, pricing and other financial terms in contracts can be commercially sensitive.