In a global economy increasingly based upon conceptual products, converged technologies and international networks, intellectual property rights (IPRs) continue to be the most valuable assets of many businesses. An explosion of new technologies, from innovations in the field of life sciences to «nanotechnology» in the electronics industry, coupled with a trend towards international patenting behaviour, explains the continuous growth in the volume of patent applications filed worldwide. Similar trends can be seen in other areas of IP, e.g. trade marks, designs and copyrights. Not surprisingly, therefore, the use of arbitration to resolve IP disputes is on the rise. Indeed, arbitration of certain IP disputes yields various distinct advantages. It permits the parties to resolve multiple national disputes involving the same IPR in a single proceeding, providing time and cost benefits. The finality of arbitration also avoids protracted appeals and recourse practice. Decision-makers’ expertise is often critical in IP disputes, whether that be knowledge of a particular area of science or technology. Arbitration permits the parties to appoint arbitrators with the specific expertise required to understand their case. Confidentiality is often particularly important in IP disputes and the parties by agreeing on using arbitration can create far-reaching duties of confidence. Certain features of arbitration have greater impact and importance in IP disputes. Historically, on grounds of public policy, some have suggested that IP disputes are not arbitrable. Nonetheless, in the authors’ view, concerns relating to arbitrability have been somewhat overstated in the past, including because: a) arbitration generally only affects the parties bound by the arbitration agreement (and so awards produce only inter partes effect), indeed, this feature of arbitration helps overcome most arbitrability objections; b) the issue of arbitrability usually only arises in connection with IPRs subject to registration and usually only in relation to the issue of invalidity; c) only a handful of jurisdictions expressly prohibit the arbitration of IP disputes; d) in practice, arbitrability issues rarely arise in IP arbitrations; e) very few arbitral awards are successfully challenged on public policy grounds; and f) there are practical ways to prevent challenges based on arbitrability, for example, a tribunal could be asked to make findings of non-enforceability rather than invalidity. Because of the particularities of IPRs, parties wishing to benefit from arbitration must commit to thorough planning, particularly where the dispute involves IPRs protected in several jurisdictions.
Iurgium [previously Spain Arbitration Review]