Originally from World Arbitration and Mediation Review (WAMR)

PREVIEW

I.     INTRODUCTION

This article will address the following questions:

1.    Does the court or the tribunal decide whether patent validity is arbitrable?

2.    What law should a court or tribunal choose to determine whether patent validity is arbitrable?

3.    Will an arbitral award determining validity be enforced in a set-aside proceeding at the seat of the arbitration or in an enforcement action brought elsewhere?

4.    What are the rules regarding the arbitrability of patent validity in some of the major European and Asian jurisdictions?

In the interest of simplicity, this article will examine questions 1–3 above principally from the perspective of the new Restatement U.S. Law of International Commercial and Investor-State Arbitration (the “Restatement”)  that was adopted in May of 2019.  This Restatement is the culmination of more than ten years’ work by a committee of scholars under the auspices of the American Law Institute (“ALI”).  Although Restatements are not binding law, they are often looked to as authoritative and can have a substantial effect on the future development of the law. 

II.    PRELIMINARY QUESTIONS

Before turning to the above questions, however, there are three preliminary questions that are worth addressing. First, what is meant by the term “arbitrability”? This often causes confusion because there are different definitions in different parts of the world. In most of the rest of the world the term “arbitrability” means “subject matter” arbitrability;  Is the subject matter one that is capable of resolution by arbitration?  In the U.S., “arbitrability” means not only “subject matter” arbitrability but also includes questions relating to the “existence, scope and validity” of the arbitration agreement.   Patent validity is a type of “subject matter” arbitrability and will be used in that sense in this article, and not in the broader U.S. sense, unless otherwise stated.