Enforceability - Chapter 11 - Arbitration of International Intellectual Property Disputes, Second Edition
Thierry Calame is a partner in the intellectual property practice of Lenz & Staehelin in Zurich, Switzerland. He has extensive experience as a counsel in patent and other IP litigation as well as international IP and technology-related arbitration, involving IP validity, infringement, and licensing matters across various industries, such as pharmaceutical, medical device, chemistry, energy, and telecommunication, among others. Thierry Calame also regularly sits as arbitrator in IP and technology-related arbitrations. He graduated from the Swiss Institute of Technology (ETH) in Zurich in Switzerland (Dipl. Nat. sc. ETH [chemistry]) as well as the Law School of the University of St. Gallen in Switzerland (Dr. iur.). He ranks among Switzerland’s first tier IP practitioners in all major league tables, such as Chambers & Partners, Who’s Who Legal, Legal 500, iam1000, WTR1000, and Managing Intellectual Property. He is considered “one of the best patent lawyers in Switzerland, noted for his expert handling of pharmaceutical cases,” “a leading light and a pre-eminent figure in the patents market,” “one of Switzerland’s top patent litigators and go-to for biotechnology players” who “maintains a broad network and immense respect in the courts and among his peers.”
Martin Aebi is a Counsel in the dispute resolution practice of Lenz & Staehelin in Zurich, Switzerland. He has extensive experience as a party representative before arbitral tribunals and state courts in international IP and technology-related matters such as IP validity, infringement, licensing or joint development across various industries including pharmaceutical, energy, automotive or general industrial production. He graduated from the Law School of the University of St. Gallen in Switzerland (Dr. iur.) as well as Columbia Law School in the United States (LL.M., Fulbright Scholar). Martin Aebi ranks among Switzerland’s leading arbitration practitioners in all major league tables, such as Chambers & Partners, Who’s Who Legal or Legal 500. He is praised in Who's Who Legal (Future Leaders 2020) as a “very experienced arbitration lawyer who gains international recognition as an excellent counsel with a sharp legal mind and a pragmatic approach.”
The mechanisms to enforce awards, on the one hand, or to vacate them, on the other, will in many disputes be of real concern to the parties. If the losing party does not voluntarily comply with an award, once it is rendered, the award must be enforced to be effective. Alternatively, if the losing party believes that the award was rendered contrary to applicable law, it may either oppose enforcement or seek to have the award set aside. These aspects may be particularly relevant in international IP disputes where it is often of crucial importance that orders for permanent relief—including orders to do something or to refrain from doing something—must be enforceable in one or more jurisdictions without undue delay or obstruction.
There are, however, real differences between an enforcement proceeding and one for setting aside. For a start, the results of the two procedures are different. An award which is vacated will be deemed a nullity –i.e. it ceases to be an effective award—in most jurisdictions around the world. A denial of recognition and enforcement usually renders the award unenforceable only in the country in question and does not affect its force or effect in any other country. Also of importance is that while recognition and enforcement proceedings can be brought in any country with jurisdiction over the losing party or the subject matter of the dispute, a proceeding for vacatur can only be brought in the country under whose laws the arbitration was conducted, usually the country in which the arbitration was seated. Lastly, although in many countries the grounds for each are similar, there are other countries where the grounds can be significantly different. Vacatur is governed by the national arbitration law of the seat, while enforcement, outside the seat, is governed by the New York Convention, at least in those countries which are signatories to it.
The grounds for vacatur therefore can and do vary from country to country. Conversely, the grounds for denial of enforcement of a foreign award—that is, enforcement of an award in a country other than the seat of the arbitration—are determined and constrained by the New York Convention. Thus, the same minimum standards exist in the many signatory countries.