Clients and lawyers often consider negotiation or litigation to be their only options for resolving intellectual property (IP) disputes. While IP arbitration is on the rise, there is still a tendency to view these processes as alternatives to one another. A much broader range of processes can and should be considered to resolve IP disputes in most situations. While seasoned IP practitioners tend to focus on adjudicative processes (e.g., litigation and arbitration), non-adjudicative processes can help reduce the time and cost to outcome, improve settlement rates, preserve business relationships and provide higher satisfaction ratings. These non-adjudicative processes may be non-evaluative (e.g., mediation) or evaluative (e.g., conciliation or expert determinations). The inclusion of non-adjudicative processes (particularly mediation) in conjunction with adjudicative processes is likely to lead to significantly faster, cheaper and better outcomes, with higher compliance and satisfaction ratings in over 90 per cent of IP disputes, both in domestic and international matters. It should be considered in all IP disputes.
Read moreWhen Intellectual Property Is the ‘Investment’: Arbitrating against Sovereigns
There is no shortage of disputes in which patent holders may find themselves embroiled. ‘Trolls’ challenge the patent’s validity in an attempt to extort rent.[2]The oft-used practice of ‘evergreening’ comes under scrutiny for artificially extending patent exclusivity.[3] Resolution of disputes such as these typically revolves around purely patent law concepts, such as utility, obviousness or prior art enablement. The same concepts, as well as contractual issues, are also at the heart of patent-based commercial arbitrations in instances where the dispute involves licensees, as discussed in other chapters.
Read moreWhy Arbitrate International IP Disputes?
International arbitration provides an appealing alternative to adjudication in national courts for many international and cross-border intellectual property (IP) disputes. Fundamentally grounded in party autonomy, arbitration enables parties from diverse jurisdictions and legal traditions to agree on, and resort to, efficient and specialised dispute resolution mechanisms tailored to their specific needs. Such customisation particularly complements common features of international IP disputes.
Read moreDrafting Arbitration Clauses in IP Agreements
When drafting dispute resolution provisions, parties would do well to keep in mind the maxim ‘an ounce of prevention is worth a pound of cure’. Clear and thoughtful drafting helps to ensure the parties’ chosen method (or methods) for resolving disputes will function as the parties intended, is effective and maximises the likelihood that any disputes will be resolved in a timely and cost-effective manner. Poor or imprecise drafting risks the opposite because it invites arguments over the scope and operation of provisions and diverts resources away from resolving the merits of the disputes these provisions were supposed to settle.
Read moreIP mediation: government funding & Key Developments in Singapore
When parties are engaged in a dispute over their IP rights, the outcome of a case is determined by the facts of the dispute and the applicable law. However, mediation is an amicable way of resolving a dispute that allows parties to engage in a dialogue that is guided by their interests. When parties are engaged in a dialogue that is focused on their interests, this often results in a settlement that aligns with the interests of both parties. Furthermore, mediation generally results in time and cost savings for parties, as parties have control and certainty over the process to discuss and formulate a win-win solution for both parties.
Read moreThe Role of Arbitral Institutions in Cybersecurity and Data Protection in International Arbitration
Cybersecurity and data protection have been dominating conversations in the international arbitration community in recent years. From an analysis of how the stakeholders may be best equipped to address cybersecurity risks, to considerations on maintaining confidentiality in international commercial arbitration, as well as calls to address the impact of the General Data Protection Regulation (“GDPR”) on virtual arbitration proceedings, much scrutiny has been afforded to these issues. Discussions on this topic have been further enhanced following the release of the IBA Cybersecurity Guidelines (the “IBA Guidelines”), the ICC-NYC Bar-CPR Protocol on Cybersecurity in International Arbitration, the latest being the 2020 Edition (the “Cybersecurity Protocol”), as well as the public consultation draft of the ICCA-IBA Roadmap to Data Protection in International Arbitration. The author opines that cybersecurity and data protection go hand in hand as both involve the receipt, usage, processing, transmission, and preservation of data in any given setting. The ongoing COVID-19 pandemic has further heightened the importance of these issues since more proceedings with high value and business-sensitive information are being conducted wholly online, are frequently held in different jurisdictions, and often involve unencrypted digital exchanges.
Read moreArbitrating Intellectual Property Disputes: Lessons from Hong Kong and Singapore
Alternative dispute resolution (ADR) is growing in popularity as a method of resolving intellectual property (IP) disputes across the globe. This is evident from the rising number of cases handled by the WIPO Arbitration and Mediation Centre over the past few years, from 136 cases in 2017, to 155 in 2018, to 178 in 2019.[1] Outside of arbitration and mediation, domain name dispute resolution (DNDR) administrative processes are quickly becoming a preferred method to deal with trademark disputes involving online domain names, with 3,074 cases filed with WIPO in 2017, 3,452 in 2018 and 3,693 in 2019.[2]
Read moreStrategy for settlement negotiation in IP infringement cases
After discovery of infringement, intellectual property (IP) right holders filing administrative complaint, civil litigation, or taking other right-defending measures usually intend to ask the infringing party to cease infringement and compensate for their losses. Apart from pursuing the case through regular legal proceedings, right holders also have another option: Negotiate with the infringing party for a settlement.
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