Conflict of Laws in the Arbitration of IP Disputes - Chapter 19 - Conflict of Laws in International Commercial Arbitration
Originially from Conflict of Laws in International Commercial Arbitration
Until recently, the relationship between Private International Law (hereinafter: “PIL”) and Intellectual Property (hereinafter: “IP”) law was underexplored within legal academia. There has been little case law, statutory rules, or literature on the interaction between these two complex fields of law. Over the past decade, however, there have been substantial scholarly efforts to study this interaction. As a result, policymakers have sought to address areas of interface as between PIL and IP law. Most notably, within the EU, the Brussels I bis Regulation and the Rome II Regulation both have specific provisions on the jurisdiction and applicable law related to certain types of IP disputes. Moreover, several legislative initiatives in the United States,3 Europe,4 Japan,5 Korea,6 and at the International Law Association7 have been undertaken to address PIL dimensions of IP related disputes more comprehensively. However, all of these instruments primarily focus on PIL-related issues raised in the context of in court litigation. The question of whether or not the conflict-of-laws rules reflected in these instruments are suitable for disputes subject to arbitration proceedings remains to be answered.
Despite a historic reluctance toward the use of arbitration for IP disputes, prevailing trends across different jurisdictions are shifting toward greater acceptance of arbitration as a viable alternative to litigation, with arbitration proceedings becoming increasingly popular as a dispute settlement mechanism for IP disputes.8 While the most controversial issue has been the non-arbitrability of invalidity claims regarding registered IP rights, in recent years, several states have extended the jurisdiction of arbitral tribunals to decide on the invalidity of IP rights at issue, at least with an inter partes effect.9