Introduction - Chapter 1 - 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.
The value of many companies doing business in the 21st century is increasingly found in some significant part in their Intellectual Property – IP. Many of today’s largest and most successful companies rely on IP for much of their asset value. From technology companies such as Apple Inc., Google Inc. (now Alphabet Inc.) and Microsoft Corporation to content and branding ones, such as The Walt Disney Company and the Ralph Lauren Corporation, the value and importance of IP to them is indisputable. As the commercial value of IP has grown, so has the need to protect it. And with that increasing need, the number and importance of disputes related to IP have also grown.
The traditional method of resolving IP disputes is in-court litigation, but it is, of course, not the only way to do so, nor, for many IP disputes, the best way. Alternative methods of dispute resolution – principally, but not exclusively, arbitration and mediation – have for some time been effective substitutes for litigation.
This book focuses on the arbitration of IP disputes when the arbitration is conducted procedurally under United States federal or state arbitral law. It is not a general overview of United States arbitration law, but rather deals with topics either (i) where the IP nature of the dispute gives rise to special or complicated issues or (ii) where more general topics have a real and particular importance to or impact on IP disputes. It is also not about the arbitration of disputes pertaining solely to United States IP, although certainly many of those arbitrations would fall within its scope. Nor is this book about the arbitration of IP disputes solely between United States resident parties, although again many of those arbitrations would be covered by the topics covered herein. Rather, the scope of this book is the arbitration of IP disputes so long as the procedural laws governing arbitration itself, the lex arbitri, are those of the United States or one of the States. As such, arbitrations commonly considered either international or domestic would fall within the book’s coverage so long as the applicable lex arbitri is United States federal or state law. However, this book will not cover topics that wholly or primarily relate to international arbitrations seated in the United States, except in instances where the law or practice in question is unique to the United States.