PDF OF TITLE PAGE AND T.O.C.

Preface to the Second Edition
Preface to the First Edition
About the Editor
About the Contributors
Defined Terms
 

CHAPTER 1: Introduction
Thomas D. Halket and Maria Chedid
 

CHAPTER 2: Arbitrability of Intellectual Property Disputes
Steven A. Certilman and William H. Baker
 

CHAPTER 3: The Arbitration Agreement
Thomas D. Halket and Maria Chedid
 

CHAPTER 4: The Rules of Selected Administrative Bodies Relevant to Intellectual Property Disputes
Sherman Kahn and Conna A. Weiner
 

CHAPTER 5: Choice of Arbitrator
James Bridgeman and Richard C. Levin
 

CHAPTER 6: Confidentiality During and After Proceedings
Laura A. Kaster and Philip O'Neill
 

CHAPTER 7: Disclosure and Admission of Evidence in the International Arbitration of Intellectual Property Disputes
Angela Foster and Merriann M. Panarella
 

CHAPTER 8: Choice of Law
Theodore J. Folkman and David Lee Evans
 

CHAPTER 9: The Impact of Public Policy Considerations
Richard Kreindler and  Jean-Yves Garaud
 

CHAPTER 10: Provisional and Final Remedies
David H. Herrington and Alexandra K. Theobald
 

CHAPTER 11: Enforceability
Thierry Calame and Martin Aebi
 

Table of Authorities
Table of Cases
Table of Statutes and Rules
Index

EDITOR AND CONTRIBUTOR

Thomas Halket practices law in the State of New York, dividing 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 past President of the Chartered Institute of Arbitrators, Chair of the Technology Advisory Committee of the American Arbitration Association, Chair of the Section of Science and Technology of the American Bar Association, Chair of the Subcommittee on Software and the Uniform Commercial Code of the New York City Bar Association and member of Task Force on IT in Arbitration of the ICC Commission on Arbitration. 

He is an Adjunct Professor of Law at the Fordham University School of Law where he teaches courses on International Arbitration, on Licensing, on Commercial Technology and IP Transactions and on Entrepreneurship Law. Earlier in his career, he was the partner in charge of the Commercial Technology Practice in the New York Office of Bingham McCutchen LLP. Prior to that he was a partner and co-chair of the Technology and the Emerging Company Group of Hughes, Hubbard & Reed.

A Chartered Arbitrator, Fellow of the Chartered Institute of Arbitrators, GAR listed arbitrator, on "Tech List" of distinguished arbitrators of the Silicon Valley Arbitration and Mediation Center, member of the National Academy of Distinguished Neutrals and of the IDR Group  and Fellow of the College of Commercial Arbitrators, he has been an arbitrator and mediator for over 30 years. He is listed on arbitral panels around the world. Although Mr. Halket has acted as a neutral for a wide variety of domestic and international disputes, he specializes in intellectual property and technology related matters. He is a member of the Scottish Arbitration Centre’s Arbitral Appointments Committee, a Liveryman of the Worshipful Company of Arbitrators in London, a member of the USCIB Arbitration Committee, a member of the LCIA and member of the International Arbitration Club of New York.

A frequent author and speaker, in addition to this book he is a co-author of a book on the arbitration of IP disputes in the United States. 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.
 

CONTRIBUTORS

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.”

 

William H. Baker is the Principal of Baker ADR.  He is a Fellow of the College of Commercial Arbitrators, a Fellow of the Chartered Institute of Arbitrators and a former officer of its New York branch.  He has taught International Arbitration and Mediation as an adjunct professor at Cardozo Law School and has been listed multiple times in Best Lawyers in America for international arbitration in New York.  He is a graduate of Yale University and Harvard Law School.

 

James Bridgeman SC, FCIArb, Chartered Arbitrator, is a Senior Counsel, arbitrator, adjudicator and mediator with a practice based at The Law Library, Dublin, Ireland and at 4-5 Gray’s Inn Square, London, England. He has a special interest in arbitration, ADR, commercial law, construction and intellectual property disputes. He is a graduate of Trinity College Dublin where he read history and political science and subsequently read Law at the Kings Inn, Dublin. Before commencing practice as a barrister, he qualified as a trademarks attorney. He is a past President of the Chartered Institute of Arbitrator and a past Chairman of the Irish Branch of the Chartered Institute of Arbitrators. Mr. Bridgeman is a WIPO-trained mediator and regularly acts as arbitrator and as panelist for Internet-domain-name disputes and has appointed by WIPO, ICC, NAF, Nominet UK and the Czech Arbitration Court. He is a member of the faculty of the Trinity College Dublin Diploma in Construction Law and Contract Administration.

 

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.”

Steven A. Certilman has been a practicing corporate and commercial attorney and commercial litigator in New York and Connecticut for more than thirty-five years and a commercial arbitrator and mediator since 1988 with extensive domestic and international experience as sole arbitrator, panelist and chair in a range of commercial, IP and IT cases.  He is a Fellow and Chartered Arbitrator of The Chartered Institute of Arbitrators (London, England), a Fellow of the College of Commercial Arbitrators, an Accredited Mediator of The Center for Effective Dispute Resolution (London, England) and a Fellow of the American Bar Foundation.  He is a former Adjunct Professor of Law at Fordham University School of Law in New York, New York teaching international arbitration (2011-2017) and is a member of arbitration panels including the International Centre for Dispute Resolution (ICDR) and American Arbitration Association (Commercial, Large Complex Case, Mergers and Acquisitions, Employment, Technology and Mediation Panels), International Institute for Conflict Prevention and Resolution (CPR) (Commercial, Technology and Mediation Panels), FINRA, LCIA, Court of Arbitration for Art (CAfA), HKIAC (Commercial and Intellectual Property Disputes Panels), VIAC, Asian International Arbitration Centre (AIAC), British Virgin Islands International Arbitration Centre (BVIIAC) and other major ADR panels worldwide. Mr. Certilman is also a member of the Panel of Mediators of the United States District Court for the Southern District of New York.  He has authored numerous works on ADR topics.  He is a frequent presenter and trainer in arbitration continuing education programs, served as a Course Director for the Chartered Institute of Arbitrators-Columbia Law School  Course on International Arbitration and the CIArb Accelerated Route to Fellowship  program and was honored to have been elected twice to serve as Trustee and Chairman of the Board of Trustees of the Chartered Institute of Arbitrators, www.arbitrators.org, the London-based global leader in ADR with more than 14,000 members worldwide.

       In addition to his work in law, arbitration and mediation, Mr. Certilman serves as a Trial Referee of the Superior Court of the State of Connecticut, which he also served as a Magistrate from 2004-2018.  He has twice served as chair of the Technology Law Section of the Connecticut Bar Association and is a member of the New York, Connecticut, Massachusetts, and District of Columbia bars.

Maria Chedid is a Partner at Arnold & Porter LLP, where she leads the firm’s international arbitration practice in the Western United States. She serves as lead counsel in both commercial and investment arbitrations, sits as an arbitrator, and has over twenty-five years of experience with arbitrations administered by all major arbitral institutions including the ICC, ICDR, SIAC, LCIA, ICSID, DIAC, CPR, JAMS, AAA, UNCC, and the Iran-US Claims Tribunal. She is one of the two US members of the International Court of Arbitration of the International Chamber of Commerce (ICC); co-chair of the AAA/ICDR Global Working Group on Technology and Life Sciences Arbitration; co-chair of the AAA/ICDR California Advisory Committee; a US member of the National Committee for the Singapore International Arbitration Centre (SIAC) Users Council; an Officer of the London Court of International Arbitration (LCIA) North American Users’ Council; and the founding president and co-chair of the Board of Directors of the California International Arbitration Council (CIAC). Ms. Chedid has been recognized for her arbitration expertise in Chambers USA, Chambers Global, The Legal 500 US, Super Lawyers, and Euromoney's Guide to the World's Leading Experts. She has twice been a recipient of California's Top Women Lawyers of the Year award, in recognition of her exemplary advocacy on behalf of clients as well as her trailblazing work in international arbitration, and has consistently been named to the Silicon Valley Arbitration & Mediation Center’s “Tech List” of the World’s Leading Technology Arbitrators. She is a regular speaker on international dispute resolution and advocacy at conferences worldwide and guest-lectures at numerous law schools, including Stanford Law School, UC Berkeley School of Law, Columbia Law School and the Straus Institute for Dispute Resolution at Pepperdine Law School, where she has taught as an adjunct professor. Ms. Chedid is originally from Lebanon and is a native Arabic speaker.
 

David L. Evans is Counsel to the law firm of Murphy & King, P.C. in Boston, Massachusetts. For more than 35 years, he has represented large public corporations, closely held companies and individuals in the resolution of complex business disputes. Currently, Mr. Evans serves exclusively as an arbitrator and mediator, and has presided over more than 350 cases, domestic and international. Mr. Evans is a member of the Board of Directors of the American Arbitration Association, receiving its Outstanding Director award in 2014. He is a Fellow of the College of Commercial Arbitrators, and a member of numerous arbitration panels, including the Commercial, Healthcare and Large, Complex Case Panels of the American Arbitration Association, the Panel of Distinguished Neutrals of the International Institute for Conflict Prevention & Resolution, the Court of Arbitration for Sport, WIPO, LCIA and the ICC (North America). He was selected as a Massachusetts/New England Super Lawyer in 2006-2019 for business litigation, and maintains an “AV” rating from Martindale-Hubbell.

Theodore J. Folkman is the founder of Folkman LLC in Boston. His practice includes civil and commercial cross-border litigation and arbitration, international judicial assistance, and Massachusetts commercial, financial, trust, and real property disputes. Previously, he was with Murphy & King, PC, Hill & Barlow, PC, and Pierce Bainbridge Beck Price & Hecht, LLP, and he clerked for the Hon. Ann Aldrich of the U.S. District Court for the Northern District of Ohio. He is a member of the American Arbitration Association’s national panel of commercial arbitrators, is the co-chair of the Boston Bar Association’s international law section, and serves on the BBA’s amicus committee. He was elected to the American Law Institute in 2018.  Mr. Folkman is a graduate of Harvard Law School, where he was editor of the Harvard Journal of Legislation.

Angela Foster - Certified as a mediator and arbitrator, Ms. Foster has resolved and adjudicated over 500 disputes involving commercial and business disputes, negligence actions, employment discrimination claims and intellectual property law disputes. She is immediate past chair of the Dispute Resolution Section of the New Jersey State Bar Association and a member of numerous alternative dispute resolution panels including the Commercial and Large Complex Case mediation and arbitration rosters of the American Arbitration Association (AAA) and International Centre for Dispute Resolution (ICDR), the Panel of Distinguished Neutrals of the Institute for Conflict Resolution & Prevention, the World Intellectual Property Organization and the Financial Industry Regulatory Authority. Ms. Foster was appointed to the Silicon Valley Arbitration & Mediation Center’s List of the World’s Leading Technology Neutrals and is a member of the AAA-ICDR Council. She frequently publishes articles on intellectual property law and alternative dispute resolution and appears on various panels. She authored “Waiver of Privilege,” a chapter in the American Arbitration Association Handbook on Arbitration Practice, 2nd Edition. Ms. Foster received a PhD in Biochemistry and Molecular Biology, a bachelor’s in Microbiology and a juris doctorate in law from Rutgers University.
 

Jean-Yves Garaud is a Partner based in Cleary Gottlieb’s Paris office. His practice focuses on international arbitration as well as on related court litigation. He regularly acts as arbitrator in commercial disputes. He has long experience in IP-related disputes, both in court and in arbitration. Mr. Garaud has been published by Les Echos Executives and Le Club des Juristes, among other outlets. He has also been recognized by Benchmark Litigation Europe as a “Dispute Resolution Star,” and by Chambers Global, Chambers Europe, IFLR 1000: The Guide to the World’s Leading Law Firms, The Legal 500 EMEA, and Who’s Who Legal as a leading lawyer for Dispute Resolution (including Commercial and Transactions, Antitrust and Competition, Restructuring and Insolvency), International Arbitration, and White-Collar Crime, for regions including France, Europe, and Africa.

David Herrington is a Partner based in Cleary Gottlieb’s New York office. His practice and experience span a wide range of litigation, advisory, and regulatory matters, with a focus on intellectual property disputes. He has handled multiple suits involving claims of patent infringement, trade secret misappropriation, trademark infringement, and copyright infringement, as well as disputes concerning IP licenses. He also counsels on IP issues in the transactional context, including licensing, M&A and capital markets transactions, the sale of patent portfolios, and other matters. Mr. Herrington has conducted a number of IP suits through trial and appeal. He also has successfully represented clients in international arbitrations, including IP-related international arbitrations pursuant to the ICC, LCIA and ICDR rules.  He has been recognized by Benchmark Litigation as a “Litigation Star.”

 

Sherman Kahn is an Arbitrator and represents clients in international arbitrations presenting complex technical and commercial issues.  He has arbitrated under the ICC, AAA, ICDR, CPR, JCAA, UNCITRAL and other rules. He has sat as chair, sole arbitrator, and wing arbitrator in international and domestic arbitrations on subjects including IT outsourcing, software development, mining, patent infringement, trademark licensing, unfair competition and trade disparagement, and commercial issues.  Mr. Kahn provides advice regarding clause drafting and pre-dispute issues in connection with major construction and infrastructure projects.  He is on the International Centre for Dispute Resolution (ICDR) Panel of Arbitrators, the American Arbitration Association Roster of Commercial Arbitrators and the CPR Distinguished Panel of Neutrals and the Korean Commercial Arbitration Board (KCAB) Panel of International Arbitrators.  He is a Fellow of the Chartered Institute of Arbitrators (FCIArb) and a member of the Silicon Valley Arbitration and Mediation Center Tech List.  He also acts as a mediator.  Mr. Kahn has twenty-five years of experience in patent litigation including matters involving programmable logic devices, microprocessors and controllers, memory devices, construction equipment, medical devices, supercomputers, LCD & PDP display devices, LED Lighting, computer software, networking technologies and biotechnology.  He also litigates outsourcing, trade-secret, trademark, copyright, and antitrust matters. 
 

Laura A. Kaster, Chair-Elect of the NYSBA Dispute Resolution Section, was the President of the Justice Marie L. Garibaldi ADR Inn of Court.  She is also a past Chair of the NJSBA Dispute Resolution Section and a Co-Editor in Chief of the NYSBA’s journal. She was the 2018 recipient of the Richard K. Jeydel Award for ADR Excellence and the 2014 NJSBA’s Boskey Distinguished Neutral Award.  She is a co-editor of the CCA Guide to Best Practices in Commercial Arbitration (4th Ed 2017). She is on the Executive Committee of the National Academy of Distinguished Neutrals.  She is on the Tech List of the Silicon Valley Arbitration and Mediation Center, an arbitrator and mediator for the AAA, and on its list of Master Mediators and is on the roster for CPR.  She is a fellow of the College of Commercial Arbitrators. She has been recognized in Who's Who Legal, Mediation.  She speaks and writes widely on ADR topics. Ms. Kaster was Chief Litigation Counsel at AT&T and a partner in Jenner & Block in Chicago, Illinois.  She was a law clerk for Frank M. Coffin on the U.S. Court of Appeals for the First Circuit. 
Her website is www.AppropriateDisputeSolutions.com.

Richard Kreindler is a Partner of Cleary Gottlieb Steen & Hamilton LLP in Frankfurt and New York and has specialized in international disputes matters since 1985.  He is a US national, was educated in the US and Germany, is admitted to the Bar in New York and Paris, and is a professor of law in Germany.  He has acted as counsel, arbitrator, expert and mediator in numerous commercial and investment-treaty based arbitrations, focused on IP, energy, infrastructure, post-M&A, and public international law.  He has authored numerous treatises and other publications and lectures; his lectures in 2012 at the Hague Academy of International Law are published in Volume 361 of the Collected Courses.  He chaired the global working group resulting in the International Bar Association (IBA) Rules on Taking of Evidence in International Arbitration (2010).  He is a Fellow and Chartered Arbitrator of the Chartered Institute of Arbitrators, London.  He has served in an editorial, board or other advisory capacity for, among others, Arbitration International, German Arbitration Journal, German Institution of Arbitration, Global Arbitration Review, ICC Institute of World Business Law, International Arbitration Law Review, Swedish Arbitration Association and Vienna International Arbitration Centre.

Richard Levin today is the principal at Richard Levin Arbitration LLC and is an international and domestic arbitrator specializing in cross cultural and multi-jurisdictional disputes, as well as antitrust, competition, art-related, and intellectual property arbitrations. He has received many peer recognitions for his work. In his career. he has served both as counsel and arbitrator in many disputes, specializing in competition or antitrust-related matters as well as cases related to investment, high value art, energy, IP, construction, and sports. As arbitrator, he has served on the panel and sole arbitrator in numerous cases, including domestic and international arbitrations (ICC, ICDR, UNCITRAL, AAA) and is a member of the ICC and LCIA Arbitrator Database, the LCIA Users Council, the neutrals list at the AAA, ICDR, HKIAC (Hong Kong), CRCICA (Cairo), KCAB (Korea), the Arbitration Center of the Institute of Modern Arbitration (Moscow), VIAC (Vienna), and other institutions world-wide, He is a Fellow of the Chartered Institute of Arbitrators (FCIArb), has been selected to their highest level as a Chartered Arbitrator (C Arb), and is on the Presidential Panel of Arbitrators at the CIArb. He has been appointed to the Panel of Arbitrators at the Court of Arbitration for Art (Netherlands) and he has been named to the Tech List of the SVAMC (Silicon Valley), listing "the world's leading technology neutrals." Mr. Levin is profiled on the Global Arbitration Review Arbitrator Research Tool (GAR ART). Before becoming a full-time arbitrator, he practiced as a partner at Akin, Gump, Strauss, Hauer & Feld, specializing in international disputes and competition matters. He received his law degree from Georgetown Law Center and was a judicial clerk for the Hon. John C Godbold on the US Court of Appeals for Fifth Circuit.

Philip D. O’Neill, Jr. is an independent arbitrator, educator and author. He has presided over approximately 150 arbitrations domestically and abroad in a wide range of industries, including telecom, private equity, life science, aerospace/defense and energy.  He served as Nomura Lecturer in Law on International Arbitration at Harvard Law School, and has taught that subject for many years as an adjunct professor at Boston College and Boston University Law Schools. He has been repeatedly listed by the Silicon Valley Arbitration & Mediation Center as one of the World’s Top Technology Arbitrators, and in The Best Lawyers in America (commercial and governmental) and Expert Guides to the World’s Leading Practitioners.  He is a Fellow in both the College of Commercial Arbitrators and England’s Chartered Institute of Arbitrators, and is a Chartered Arbitrator as well.  His publications in the field of Arbitration include a textbook and teaching manual, nine book chapters and numerous articles.  He currently serves as Co-Chairman of the Board of Directors of the Boston International Arbitration Council.

Merriann M. Panarella is a prominent arbitrator and mediator whose practice includes domestic and international intellectual property and technology disputes. Previously, she was a senior partner at Wilmer Cutler Pickering Hale and Dorr where she litigated patent infringement, trade secret, non-compete, and other technology-related matters both nationally and internationally. She has represented clients in mediations, arbitrations, mini-trials and other dispute resolution processes.  Ms. Panarella is a Fellow of the Chartered Institute of Arbitrators and serves as a tutor for their Accelerated Route to Fellowship course. She currently serves on the arbitration and mediation panels of many of the principal dispute resolution institutions including the American Arbitration Association, CPR International Institute for Conflict Prevention and Resolution, World Intellectual Property Organization, International Chamber of Commerce, American Health Lawyers Association, and Financial Industry Regulatory Authority. She also is a member of the Silicon Valley Arbitration and Mediation Tech List. In addition, she serves as a neutral for the mediation panels for the Southern District of New York and for the Commonwealth of Massachusetts. Early in her legal career, Ms. Panarella was a law clerk to the Honorable W. Arthur Garrity, Jr. She is a frequent lecturer and author on a broad range of dispute resolution issues including the international arbitration of intellectual property disputes and life science matters.

For more information on Merriann Panarella, please consult www.panarellaADR.com.

 

Alexandra Theobald is an associate based in Cleary Gottlieb’s New York office. Her practice focuses on litigation and arbitration. She has advised on matters involving copyrights, trademarks, patentability and patent licensing issues. She also counsels on IP and Cybersecurity issues in the transactional context, including licensing, DMCA compliance,  claims of patent infringement, trade secret misappropriation, trademark infringement, and copyright infringement. She has experience arbitrating pursuant to the LCIA rules, and is a member of the ICCA. 
 

Conna Weiner - Arbitrator and mediator Conna Weiner, FCIArb, began her career as a litigator at Paul, Weiss, Rifkind, Wharton & Garrison in New York and then spent over twenty years in-house fielding diverse U.S. and international commercial, regulatory, transactional, IP and litigation issues for global life sciences (pharmaceuticals, medical device, vaccines, diagnostics) and healthcare companies both in the U.S. and abroad, including as a General Counsel with Novartis based in Switzerland and with other industry participants. She is currently with JAMS and continues to arbitrate and mediate complex commercial cases in matters administered through multiple providers such as the ICDR, the American Arbitration Association, the International Institute of Conflict Prevention and Resolution (CPR) (including appointments to its general commercial, biotech, technology and life sciences/healthcare specialty panels), JAMS (international & cross border, commercial, pharmaceuticals/mass torts, IP, healthcare and other panels) and the American Health Lawyers’ Association, as well as ad hoc matters under UNCITRAL and other rules. Ms. Weiner is on the World Intellectual Property Organization Panel of Neutrals and was appointed to the Silicon Valley Arbitration and Mediation Center Tech List (of neutrals with expertise in technology-based disputes) in 2016. She is a graduate of the University of Chicago Law School and Oberlin College. For a detailed description of her background and see www.jamsadr.com/weiner

 

 

"The book is a comprehensive and outstanding publication in the field of IP arbitration and it is recommended to any practitioner."
(Read full review in the ICC Bulletin)

—Dr. Thomas Legler, Partner, PESTALOZZI Attorneys-at-Law, Geneva  
 

"Arbitration of International Intellectual Property Disputes, 2d edition,  is a well-researched book by experts in the field. It covers the most recent thinking in the more important arbitral jurisdictions, and its international comparative approach to the subject matter is thorough, without sacrifice  to clarity or simplicity in a specialty that is sometimes regarded as esoteric but of ever-increasing importance world-wide. It is most worthy of a place in all law libraries.”

—Phillip Bliss Aliker,  Barrister,  Mediator & Chartered Arbitrator, Tanfield Chambers
 

"Arbitrating  IP cases on  the international level exponentially  raises the problems of process and substance. The second edition builds upon the first edition‘s scholarly and practical treatment of cross-border IP disputes and  provides valuable new information and insight. It will be of terrific assistance to those involved in international arbitrations."

— Hon. William G. Bassler U.S.D.J. (Ret.), Arbitrator & Mediator
 

"The Arbitration of International Intellectual Property Disputes, 2d,, edited by Thomas Halket, is the “go-to” reference work in the field of international IP arbitration. It effectively manages the broad, diverse, constantly developing and complex nature of the topic to provide current, comprehensive and practical guidance. Relying on contributions from leading IP arbitration practitioners, the book addresses the theory, application and practice of international IP arbitration from start to finish, serving as a useful tool at every stage. Whether you are an IP trial attorney new to the world of international arbitration or an experienced arbitration practitioner confronting international IP issues, Thomas Halket and his contributors cover it all in a thorough, practical and understandable way."

—Gary L. Benton, C.Arb, FCIArb, FCollArb; Founder and Chairman, Silicon Valley Arbitration & Mediation Center (SVAMC); Adjunct Faculty, Santa Clara Law School
 

"Arbitration of international intellectual property disputes requires specialized knowledge of several complicated bodies of substantive and procedural law, as well as cross-border practice dexterity.  The new and expanded second edition of this leading work includes discussion of the latest arbitration rules and national laws and developing subjects such as arbitration confidentiality and data security.  It is an excellent introduction to the field for the new user and a reliable guide and up-to-date repository of useful information for the arbitration generalist dealing with IP cases."

—James H. Carter, Senior Counsel and Arbitrator,  Wilmer Cutler Pickering Hale and Dorr LLP
 

"Halket and team have done it again.  In my review of the first edition, I said the treatise did an excellent job of filling a gap at the intersection of international arbitration and intellectual property disputes, that it covered the most important and difficult topics lucidly and in depth, and that even an experienced practitioner would find much that was new and useful.  That is all the more true of the revised second edition."

—Stephen P. Gilbert, The Law Office of Stephen P. Gilbert (former Partner, Bryan Cave LLP and Co-Leader of Intellectual Property Client Service Group)
 

"This timely second addition of what was already a comprehensive guide for practitioners and users alike, is welcomed. More than at any other time, global trade relies on the effective maintenance of intellectual property rights. Fragmented treatment of IP across jurisdictions requires innovative and practical means for determining those rights and enforcement of them. This book, divided into easy-to-read chapters and contributed to by leading practitioners in the field,  provides an invaluable guide to the use of arbitration to efficiently achieve these ends. Since the publication of the first edition, IP arbitration has continued to gain acceptance and arbitral law and procedure has further developed. The second edition effectively captures these changes to ensure the relevance of the book, while continuing to do so in a well-organized and user-friendly format. As technology continues to evolve and the importance of intellectual property expands, this book provides an up-to-date toolkit for business and lawyer alike."

—Wolf von Kumberg,  International Technology Arbitrator and Mediator (London & Washington DC).  Former Assistant General Counsel Northrop Grumman Corporation
 

Thomas Halket’s updated edition of Arbitration of International Intellectual Property Disputes is an authoritative work that is immensely useful to the arbitration practitioner. Its well-researched content provides valuable insights into the IP issues that invariably arise.

—Francis Xavier S.C., Regional Head, RAJAH & TANN SINGAPORE LLP
Dispute Resolution, Commercial Litigation, Investment Treaty and International Commercial Arbitration

 

Praise for the first edition:

"Thomas Halket's thorough and comprehensive treatise is a must-read for all practitioners and neutrals whose work includes the arbitration of international IP matters. His careful consideration of the many issues that arise, and his thoughtful suggestions for approaching and resolving them, make this an indispensable desktop item. I recommend it without reservation."

–Hon. Timothy K. Lewis, Counsel Schnader Harrison Segal & Lewis is a former federal appeals court judge and is Co-Chair of Schnader's Appellate Practice Group

"This treatise will be a valuable resource for those engaged in international arbitration of IP (and other) disputes. In addition to clearly explaining the procedures of the various arbitration regimes and the law that governs them, it provides practical guidance regarding the strategic and tactical issues that confront the practitioner."

–Joseph Angland, Partner, White and Case, former Chair of the American Bar Association (ABA) Section of Antitrust Law

"Except perhaps for copyrights to some extent, IP rights are far from uniform around the globe. So are the challenges that arise when two parties from different countries face a dispute. This book provides a valuable easy-to-use manual for IP arbitration by explaining the basic concepts and principal issues that can arise when arbitrating international IP disputes. What makes this book special is that it also provides for in-depth analysis on more complex and unique IP arbitration issues to the more seasoned reader. A truly indispensable work that arbitration practitioners should have on their bookshelf."

–Christian P. Alberti, Assistant Vice President, International Centre for Dispute Resolution (ICDR)

"The explosion of intellectual property disputes over the past few years, the length and expense of court proceedings, the unpredictability of results on appeals in court and the cross-border nature of many intellectual property disputes, makes arbitration particularly attractive for the resolution of these disputes. This volume fills an important need in providing both practical and theoretical information about the alternative, arbitration, which can be crafted to achieve a more expeditious, cost effective and final outcome enforceable across borders."

–Edna Sussman, Arbitrator, FCIArb; Mediator; Distinguished Practitioner in Residence, Fordham Law School

"A powerful, practical treatise that explores the unique aspects of the arbitral process as pertaining to international IP disputes, as well as weighs the benefits of arbitration in the international arena. This book is a succinct and indispensible guide covering the essential steps to arbitrating international IP disputes; written by experts in the field and crammed with useful real world scenarios."

–Vincent A. Sireci, Esq., General Counsel of The Echo Design Group, Inc.

"Thomas Halket's volume on Arbitration of International Intellectual Property Disputes exhaustively, authoritatively and thoroughly discusses all significant aspects of the international arbitral process and related issues as they pertain to use in IP disputes. This work is written in a direct teaching style that is very approachable, inviting and conveys its information in a readily understandable manner. As relatively little material exists in this increasing important high-stakes area, this volume fills a gaping need in the available reference literature. It is a welcome and, no doubt, will be an oft-used addition to the library of those involved in using arbitration to resolve these disputes including corporate counsel, outside counsel, institutions and, like me, arbitrators. This work will also significantly aid those involved with IP disputes who contemplate using arbitration as well as those who are just interested in exploring this fascinating area for their own education."

–Peter L. Michaelson, Esq., Arbitrator and Mediator, Michaelson ADR Chambers, LLC, New York; Trustee, Chartered Institute of Arbitrators, London

"The success of companies operating globally in technology or other innovative industries is linked to their ability to enter into favorable commercial agreements involving their valuable intellectual property assets. Effectively enforcing and resolving disputes that may arise in connection with these transactions is equally critical. This book, which provides a real argument for arbitration as the most efficient way to resolve intellectual property disputes as well as a thorough guide to the principal issues in the arbitral process, is a must reference for counsel to the IP-centric companies themselves, as well as investors and others who would finance and conduct business transactions with them."

–Scott Ring, General Counsel, Bessemer Venture Partners

"This book comes as an invaluable contribution to the edifice of arbitration - and its specialized track of intellectual property disputes - by a distinguished group of experts who have clearly demonstrated that there is always a different kettle of fish. This scholarly work not only provides readers with insightful principles and practices, it also comes as a timely and germane analysis of distilled and significant topics. I truly commend this work to all those with a vested interest in arbitration and intellectual property rights. It is indeed a magnum opus contribution to an affluent multidisciplinary field."

– Dr. Mohamed S. Abdel Wahab, Assistant Professor Faculty of Law, Cairo University - Egypt; Founding Partner and Head of the International Arbitration Group, Zulficar & Partners Law Firm; Chair, Technology Sub-committee, CIArb

"This book is an invaluable resource to anyone who becomes involved in a non-US arbitration involving intellectual property. Each of the authors brings a different view on this subject and each has some tremendous insight that will assist anyone who is not familiar with the specific issues relating to such matters. The book is structured in such a way that makes it easy to focus on the particular matter of interest."

–Ronald Prague, Executive Vice President and General Counsel, Synchronoss Technologies, Inc.