Originally from Arbitration of International Intellectual Property Disputes

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I. History

Intellectual Property ("IP")1 has long played a role in commerce. IP, or at least the concepts underlying IP, probably owes its birth to, among other things, the monopolies granted in the middle ages by the rulers of many European countries to practice various trades.2 Patent-type laws granting inventors exclusive rights in their inventions have existed since at least 1474 when one was enacted in Venice.3 Among the first copyright laws was the Licensing Act,4 enacted in England. The significance of IP to commerce has grown steadily since those early days, and has recently exploded with the concurrent increase in the importance of technology to modern life. Not only have old forms of IP been applied in new ways,5 but also wholly new types of IP6 have been, and it can be expected will continue to be, created.

Understandably, there has also been a growing diversity and complexity in the many commercial transactions in which IP plays a material part. And, of course, as the world has become smaller and international trade more critical, many of these transactions are increasingly cross border.

Also, understandably, there has been a similar growth in the number and nature of disputes related to IP.7 Many of these disputes, like the transactions underlying them, are international in nature. They can and do involve parties from different countries, more than one type of IP, IP arising under the laws of more than one country, IP arising under the law of a country other than that of the nationality of either or both parties, IP arising under the law of a country other than that which is the substantive law of the contract and/or some combination of the foregoing. These international IP disputes can raise, and typically do raise, complex legal, cultural and other issues going to both the substance of the dispute and the procedures employed to resolve the dispute. Indeed, international IP disputes present complexities not encountered in either domestic IP disputes or even in other international commercial disputes, and the parties to the dispute may find it undesirable or difficult to resolve international IP disputes in national courts. Arbitration, on the other hand, not only works well to resolve most wholly domestic IP disputes (i.e., disputes where the laws of only one country are involved and both parties are from that country), but it is also particularly well suited to deal with an international dispute.

This book provides a thorough guide to those aspects of the arbitral process that are of particular significance to international IP disputes. It is not intended as an overview of international arbitration for those unfamiliar with the area.8 Rather, it deals in detail with topics where the IP nature of the dispute causes special, complicated or unique issues or concerns. This chapter explores the nature of international IP disputes and how and why arbitration can provide a better way to resolve them than in court litigation. Later chapters cover drafting an effective arbitration provision for an IP arbitration itself, from arbitrability concerns through choosing the tribunal, confidentiality, discovery, choice of law, provisional and final remedies and enforceability.