arbitration in ip and technology disputes

Arbitration

in IP/technology disputes

Ernst-Jan Louwers

Jaarvergadering Orde van Octrooigemachtigden

Eindhoven, 11 April 2014

We have always had wars…

And we have weird inventions and

patents…

And arbitration…

• Typical IP/tech related conflicts

• ADR differences and reasons

• IP & tech specifics

• Unitary Patent and ADR

• Applicable law and enforcement

• Draft Dutch arbitration act

• Brainport Technology Arbitration Institute

Agenda

• Boutique firm: lean & mean in the premier league

• Risk management, compliance and governance

• Advice, contracts and litigation

• Enable and empower

• Killing showstoppers

• On top of tech developments with 8 lawyers and CTO

• Board member Brainport Centre for Technology & Law

Intro

Typical IP/tech conflicts

• Creation and R&D o Inventorship & (co)ownership

o Background/foreground IP

o Cross licensing

o Payment

• Exploitation o Infringement

o Licensing and distribution

o Royalties

o Exclusivity

o Termination

ADR: different tasts

Mediation Arbitration / expedited

arbitration

Expert determination

Informal consensual: may open new cooperation in future

Formal consensual procedure

Consensual procedure

Mediator to assist Chosen arbitrator(s) decide Expert(s) to decide

Mediator not to impose decision or solution

Binding decision (award) Binding or non-binding

Settlement = contract In principle internationally enforceable

Expert‟s opinion = contract

Leaves open other dispute resolution

Final unless arbitral appeal or remission

Non-binding leaves open other procedures

Preventing costly and lenghty procedures

Preventing costly and lenghty procedures

Preventing costly and lenghty procedures

Why choose ADR in IP/tech?

• Single procedure

o Multiple jurisdictions

o Avoid expense and complexity multi-jurisdictional litigation

o Avoid risk of inconsistent results

• Party control

o More control by parties

o Selection of suitable decision-makers

o Parties may jointly choose applicable law, place and language

o Faster and efficient

o Cost savings

Why choose ADR in IP/tech?

• Neutral expertise o Law and technical background

o ADR can be neutral to law, language and institutional culture of both parties

o Avoiding home court advantage for one party

• Confidentiality

• Finality of awards

• Enforceability of awards o New York Convention

Why no ADR?

• Non contractual disputes

o Infringement

o Other unlawful behaviour, not under contract

But the parties may voluntarily submit to arbitration!

• Publicity

• Establish public legal precedent

IP specific complexity

• Nature of IP - monopoly

• Territoriality and internationality of IP

o Validity, recognition and enforcement of award

o Arbitrability: depending on affected national IP

o (In)validity only inter partes?

• validity issues only effect between parties?

• Dutch law: exclusive competence of court at The Hague

• for instance Belgian law: arbitration erga omnes with third party right to oppose decision; art 51 Belgian Patent Act

IP specific complexity

• Possible limitations to arbitrability of validity

• Applicable law

o Substantive law

• Existence, invalidation

• Ownership title

• Scope of protection

o Procedural

• Arbitrable?

IP specific issues

• Composition of arbitral tribunal

• Interim injunctions – also ex parte?

• Evidence: interim relief

• Protecting confidential Information

o Confidentiality of arbitration

o Confidentiality of evidence inter partes • contractual arrangements or procedural order; or

• confidentiality advisor

• Experts

Technology specific issues

• Composition of arbitration tribunal

o Specific expertise required?

o Engineer, IT expert, financial experts, forensic?

• Interim measures required?

• Partial solution attainable?

Unitary Patent & ADR

• Patent mediation and arbitration centre

• Disputes within scope of AUPC

• Challenging arbitral award? Which court?

• Validity and infringement: to be determined under lex protectionis or lex proprietas?

Unitary Patent & ADR

• Article 35(2) AUPC: “patent may not be revoked or limited in mediation or arbitration proceedings”

• Article 79 AUPC: “patent may not be revoked or limited by way of settlement”

• Inter partes…?

• Preliminary questions to UPC

o Not by arbitrators… (?)

• Gordian knots to be solved by Unitary Patent Court…

Unitary Patent & ADR

Applicable law and

enforcement

• WIPO Arbitration Rules: lex arbitri o Procedural law to be determined by place of the

arbitration

• But substantive law may be different o Choice of law

o Private international law, including Rome I treaty

• New York Convention of 1958

• European Convention on International Commercial Arbitration of 1961

Draft arbitration act NL

• Remission introduced

• Challenging arbitral award limited to court of appeal (Hof) and Supreme Court (Hoge Raad)

o latter can be opted out – advisable!

• Electronic arbitration enacted

o advantage over court

Brainport Technology Arbitration

Institute

www.brainporttechlaw.nl

Initiative of Brainport Centre for Technology & Law

BTAI: why?

• Existing legal frameworks may no longer fit new realities created by technology

• Increased and ever increasing complexity

• Courts no specialists

• No specialised ADR institute for technology

• BTAI close to the industry

• Supported by courts

BTAI: scope

• National and international disputes o technology

o tech company

• „Technology‟ o industrial high-tech, IT, automotive, nanotechnology, biotechnology,

gentechnology, robotics etc.

o but also manufacturing and „low-tech‟

• Examples o technology licenses, IP issues, infringement

o joint R&D, open innovation, co-creation, consortium agreements

o distribution and marketing agreements

o IT contracts, Internet disputes, 3D printing/additive manufacturing

BTAI: advantages

• Confidentiality

• Cost effectiveness

• Time

• Specialists speaking the industry‟s language

• List of specialists non-exhaustive

• Documents to be exchanged electronically

• Hearings to take place by videoconferencing

• Urgent matters: arbitral injunction

BTAI: road to realisation

• Independent foundation („stichting‟)

• Organisation

o board to control foundation and appoint mediators, independent experts or arbitrators

o secretariat for administrative matters

o supervisory board

o board and secretariat members cannot be appointed as mediator, expert or arbitrator

BTAI: many challenges

• Composition of board, supervisory board

• Funding

• Rules and clauses

• Arbitral appeal?

• List of independent arbitrators

o Criteria, disciplines

o Share lists with other organisations like WIPO

• Publication of decisions vs confidentiality…

• Collaboration and training

ADR: sound alternative!

But not without risk

www.louwersadvocaten.nl

louwers@louwersadvocaten.nl

040 2393203

06 52 048154