The Tribunal - Chapter 3 - 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.
There should be no disagreement that the arbitral tribunal is the key component of an arbitration. A good tribunal can maximize the likelihood that arbitration will be conducted fairly and expeditiously and minimize the likelihood that the award will be subject to being set aside. The constitution of the arbitral tribunal should therefore be of significant concern to the parties.
There are, for the most part, common themes under United States federal and state lex arbitri for issues relating to tribunal composition, but there are some differences state to state or depending on the arbitral rules in question. Nevertheless, it is possible to frame generally the questions the parties to an IP dispute need to address, namely (i) what factors may, should or must the parties take into account in the constitution of the tribunal and (ii) how the parties can choose the tribunal. The first of these questions essentially goes to the qualifications the parties can impose, or those imposed by operation of law or arbitral rule, on the make-up of the tribunal. The second question relates to the methods by which the individual arbitrator or arbitrators may be chosen.
There are no provisions of arbitral law in the United States or the arbitral rules commonly encountered in the United States that specifically in haec verba treat IP disputes differently from other commercial disputes with respect to either of these two questions, but, in some situations, there are special considerations of importance to an IP dispute. For example, the default provision on the size of tribunal can depend on the arbitral law or rules applicable to the arbitration. Since IP disputes tend to be more complicated than similarly sized commercial disputes, there is good reason to require a three-member tribunal in an IP arbitration even if a similarly sized general commercial dispute would only justify one arbitrator.