The Hong Kong Department of Justice has published a consultation paper on Arbitration (Amendment) Bill 2016 in December 2015 (the “Consultation Paper“), proposing to amend the Arbitration Ordinance to make it clear that disputes over intellectual property rights are capable of resolution by arbitration and that it would not be contrary to public policy to enforce an award solely because the award is in respect of a dispute which relates to intellectual property rights.
The current legal position in Hong Kong regarding the arbitrability of intellectual property rights is unclear as there is no specific legislative provisions addressing this issue. The Arbitration Ordinance is also silent as to the type of subject matters that are capable of resolution by arbitration. In light of this and to promote Hong Kong as an intellectual property trading hub and an international intellectual property arbitration and mediation centre, the proposed amendments to the Arbitration Ordinance aims to clarify the uncertainties. The proposed amendments include providing for a definition of “intellectual property rights” in the Arbitration Ordinance, as well as the effect of an arbitral award in respect of a dispute or matter relating to intellectual property rights. Under the current proposal, the arbitral award will only bind the actual parties to the arbitration and not beyond, which means that the award will not be binding other parties including licensees of intellectual property rights.
The Department of Justice has invited legal professional bodies, business associations and intellectual property practitioners and other interested parties to submit comments in response to the proposed amendments for the time being.