Confidentiality During and After Proceedings - Chapter 6 - Arbitration of International Intellectual Property Disputes, Second Edition
Laura A. Kaster, Chair of the NYSBA Dispute Resolution Section, was the President of the Justice Marie L. Garibaldi ADR Inn of Court. She is also a past Chair of the NJSBA Dispute Resolution Section and a Co-Editor in Chief of the NYSBA’s journal. She was the 2018 recipient of the Richard K. Jeydel Award for ADR Excellence and the 2014 NJSBA’s Boskey Distinguished Neutral Award. She is a co-editor of the CCA Guide to Best Practices in Commercial Arbitration (4th Ed 2017). She is on the Executive Committee of the National Academy of Distinguished Neutrals. She is on the Tech List of the Silicon Valley Arbitration and Mediation Center, an arbitrator and mediator for the AAA, and on its list of Master Mediators and is on the roster for CPR. She is a fellow of the College of Commercial Arbitrators. Her website is www.AppropriateDisputeSolutions.com. She has been recognized in Who’s Who Legal, Mediation. She speaks and writes widely on ADR topics. Ms. Kaster was Chief Litigation Counsel at AT&T and a partner in Jenner & Block in Chicago, Illinois. She was a law clerk for Frank M. Coffin on the U.S. Court of Appeals for the First Circuit.
Philip D. O’Neill, Jr. is an independent arbitrator, educator and author. He has presided over approximately 150 arbitrations domestically and abroad in a wide range of industries, including telecom, private equity, life science, aerospace/defense and energy. He served as Nomura Lecturer in Law on International Arbitration at Harvard Law School, and has taught that subject for many years as an adjunct professor at Boston College and Boston University Law Schools. He has been repeatedly listed by the Silicon Valley Arbitration & Mediation Center as one of the World’s Top Technology Arbitrators, and in The Best Lawyers in America (commercial and governmental) and Expert Guides to the World’s Leading Practitioners. He is a Fellow in both the College of Commercial Arbitrators and England’s Chartered Institute of Arbitrators, and is a Chartered Arbitrator as well. His publications in the field of Arbitration include a textbook and teaching manual, nine book chapters and numerous articles. He currently serves as Co-Chairman of the Board of Directors of the Boston International Arbitration Council. For further information see www.pdoneill.com..
Confidentiality is likely to be a crucial concern for one or both parties to an IP dispute. The concern goes beyond the general desire, shared by most parties to commercial disputes, to avoid airing the dispute in public . The reason for heightened concern in IP disputes is typically that the documents produced, or the testimony adduced at the hearings, indeed even the fact of the dispute, may reflect valuable business information that, if made public, would cause severe damage. A trade secret dispute by its very nature involves subject matter that must be protected from disclosure in order to remain a trade secret. Even if the dispute relates to IP which itself is public—for example, patents or trademarks—evidence may contain information such as “know-how” that one or the other party desires to protect from public disclosure.
Parties often elect to resolve their IP dispute through arbitration rather than in court because they correctly perceive that arbitration affords them and their dispute more privacy. However, as discussed in chapter 1, establishing the boundaries of confidentiality in an arbitration is a more complicated matter than is at first apparent. Confidentiality protection for exchanged information is distinct from the privacy of the hearing itself. In addition, the obligations that may be imposed upon the diverse participants to an arbitration vary, the rights of non-parties may be different from the rights of participants and there is substantial country-to-country variation in the “default” protection afforded by law.
Almost all definitions of arbitration include the word “private,” whether in reference to the use of a private third-party neutral or in defining the process itself. Many people assume that the privacy of the process equates to confidential treatment of information exchanged during arbitration. Statements are also made about confidentiality being integral to the arbitration process. Indeed, decisions of the United States Second and Fifth Circuit Courts of Appeals, in a system viewed by many other countries and commentators to be among the least friendly to confidentiality in arbitration, have stated that confidentiality clauses are so common in arbitration that an “‘attack on the confidentiality provision is, in part, an attack on the character of arbitration itself.’”