C Mark Baker Mark A. Robertson July 14 2022 Protecting IP rights through international arbitration Norton Rose Fulbright | Arbitration & ADR - International C Mark Baker, Mark A. Robertson Arbitration & ADR IntroductionAdvantages of international arbitration for IP disputesLimitations of international arbitration for IP disputesParallel rights under investment treatiesCommentIntroductionThe rapid development of new technologies and processes in sectors such as pharmaceuticals, biotechnology, life sciences, aerospace, energy, telecoms and information technology has led to an exponential increase in the number of patents and trademarks issued and domain name registrations around the globe. The increase is unlikely to slow with ongoing events like the covid-19 pandemic, the fourth industrial revolution and the scramble to address climate change – all of which are driving further innovation.To harness and capitalise on these advances, many companies and governments are seeking strategic partnerships with international business partners (both public and private), particularly in emerging markets. Business arrangements are increasingly cross-border and complex, often involving multiple parties in high-value, long-term arrangements. Because intellectual property is often an important asset in many of those arrangements, the transaction documents often include provisions addressing the use of intellectual property, such as licensing, cooperation or technology transfer agreements. In most cases, these seek to protect IP rights across a number of jurisdictions.Advantages of international arbitration for IP disputesParties are more frequently choosing international arbitration to resolve disputes that might arise in arrangements that involve intellectual property in more than one country. International arbitration is well suited for such complex, cross-border disputes.Ability to select expert arbitratorIn some regions, IP disputes are resolved by jury trials, with laypersons deciding important factual issues. This raises concerns over whether those deciding the dispute have sufficient relevant skills to make the right decision. If parties include an arbitration clause, they can require that the tribunal has the appropriate expertise.Private and confidentialUnlike most court proceedings, international arbitration is a private and often confidential process. This offers many benefits, including reducing the risk to proprietary or commercially sensitive information and avoiding airing disagreements between parties in open court.Less formal and adversarialArbitration is less formal than litigation and, although not always less contentious, it can offer a less adversarial process than litigation. When combined with the confidential nature of most arbitrations, the less adversarial nature can help preserve a long-term or strategically important business relationship, which may be the most beneficial outcome.NeutralityArbitration provides an impartial forum with neutral decision makers under acceptable law and in a language with which the parties are comfortable. It allows parties to avoid being before foreign courts, which can be particularly important where disputes involve jurisdictions, including emerging markets, where parties have less confidence:in the local rule of law; orthat local courts will decide cases independently, fairly, impartially and in a timely manner.Concerns over neutrality may be compounded where states, state-owned entities, or nationally strategic matters are involvedOne forum for all disputesWhere companies operate internationally, IP disputes often involve more than one jurisdiction. Because many IP rights protections are territorial in nature, the resolution of a dispute may require parallel litigation in courts in different countries. This can lead to conflicting judgments with the scope of the parties' rights interpreted differently by different courts. Litigation in multiple forums may also complicate settlement. Having one forum offers greater consistency of outcome and often presents better opportunities for a global settlement.Flexible process with good procedural safeguardsParties can tailor proceedings to their needs and those of the specific dispute. When leveraged properly, this is a powerful tool. For example, discovery in IP litigation, particularly in the United States, can be extremely expensive. In arbitration, parties can agree on a limited scope of discovery, or agree that evidence will be on paper only and hearings be held virtually, saving significant time and cost. But parties must actively seek to leverage procedural flexibility. That is where it becomes critical to hire experienced arbitration counsel. Too often these benefits are missed where, for example, proceedings are run by litigators who simply treat the arbitration as they would a lawsuit brought before a court.That is not to say that it is a procedural "free-for-all". Arbitration rules provide procedural safeguards. Some are mandatory, while others function through agreement and at the request of the parties. For example, interim relief (often of critical importance in IP disputes) can be sought in arbitration, although parties often can seek interim relief from the courts in support of the arbitration. Expedited procedures may also be available – for example:appointment of an emergency arbitrator;accelerating the procedural timeline;curtailing disclosure; orimposing a shorter deadline for issuance of the award.Cost and time efficienciesBecause the parties and the tribunal can tailor the process, arbitration has the potential to reduce the costs and time of proceedings. As explained above, it does not always live up to this potential, but where counsel leverage procedural flexibility and utilise tools available to minimise costs (such as technologies to drive efficiencies in case management, disclosure and document review), the time and cost savings can be significant. This is magnified when arbitrators are experienced and possess excellent case management skills.FinalityArbitration awards are typically expressed as final and binding. Most arbitral rules and laws limit rights to appeal or challenge awards. While the ability to challenge an award on grounds of procedural unfairness, bias or want of jurisdiction is usually available, most jurisdictions limit the right to appeal an award to multiple levels of senior courts. Outside the United States, this generally avoids protracted challenges to the decision.EnforcementArbitration offers significant benefits when it comes to enforcement where disputes are cross-border. The Convention on the Recognition and Enforcement of Foreign Arbitral Awards (the New York Convention) offers a regime for enforcement of awards that is accepted in almost all countries. It restricts the ability of domestic courts to reconsider the merits of awards and limits challenges to enforcement to a limited set of grounds (largely, serious procedural irregularities or lack of jurisdiction). There is no equivalent regime for enforcement of foreign court judgments, so it is often harder to enforce court judgments from one country in another country.Limitations of international arbitration for IP disputesPure IP rights disputes can arise between parties with no prior relationship. Arbitration is a consensual process, and the right to go to arbitration is rooted in the parties' agreement to arbitrate. Where there is no contractual relationship, an arbitration cannot occur except by agreement after a dispute has arisen. If parties can subsequently agree to arbitrate the dispute, they can avoid litigation and reap the benefits of arbitration.Because arbitration is a form of private dispute resolution, an award that is binding on the parties to the arbitration will not be binding against the whole world. Similarly, the award may not amount to binding precedent. That said, for strategic reasons, these points may sometimes be an advantage rather than a disadvantage.Some national laws prohibit arbitration of certain fundamental IP rights. For example, questions of the validity of IP rights (such as the validity of a patent) may not be arbitrable. This varies globally so it is important to consult experienced arbitration counsel when choosing the dispute resolution forum.Parallel rights under investment treatiesWhere a dispute involves a state and a foreign investor, the investor may have additional rights under a bilateral investment treaty, including the right to sue the state in international arbitration. Such rights often run parallel to rights under domestic law or the law of the contract. Treaty rights can offer important protections, particularly in current times where governments are taking steps to address complex issues of national strategic importance – covid-19, national health, climate change, the energy transition, energy security, the fourth industrial revolution, trade disputes, rising nationalism – to name but a few. Actions by governments can impact the profitability or even viability of commercial arrangements. In those circumstances, foreign investors may find they have little-to-no recourse before domestic courts. Where they have rights under an investment treaty, however, those rights offer powerful legal protections and a stronger negotiating position.CommentAs companies and governments seek to leverage opportunities arising from rapid developments in technologies and processes, it is critical that they think about protecting IP assets. A right is only valuable if it is enforceable, and a crucial element of enforceability is having an effective dispute resolution mechanism.However, when deciding on the dispute resolution mechanism, parties should assess the dynamics of the business and contractual arrangements. The best dispute resolution proceedings are tailored to the specific circumstances. An ounce of prevention has always been worth more than a pound of cure.For further information on this topic please contact C Mark Baker or Mark A Robertson at Norton Rose Fulbright by telephone (+1 713 651 7708) or email ([email protected] or [email protected]). The Norton Rose Fulbright website can be accessed at www.nortonrosefulbright.com.Reprinted with permission from the New York Law Journal© 2022 ALM Global Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or [email protected].