Editor's Note
Preface
About the Editor
About the Authors
Defined Terms
CHAPTER 1: Introduction
Thomas D. Halket
CHAPTER 2: Arbitrability of Intellectual Property Disputes
Steven A. Certilman and Joel Lutzker
CHAPTER 3: The Arbitration Agreement
Thomas D. Halket and Susan H. Nycum
CHAPTER 4: The Rules of Selected Administrative Bodies Relevant to Intellectual Property Disputes
Frank L. Politano
CHAPTER 5: Choice of Arbitrator
James Bridgeman
CHAPTER 6: Confidentiality During and After Proceedings
Laura A. Kaster
CHAPTER 7: Disclosure and Admission of Evidence in the International Arbitration of Intellectual Property Disputes
Joseph P. Zammit, Todd R. Hambidge and Jamie Hu
CHAPTER 8: Choice of Law
Theodore J. Folkman and David Lee Evans
CHAPTER 9: The Impact of Public Policy Considerations
Prof. Dr. Richard Kreindler and Anna G. Tevini
CHAPTER 10: Provisional and Final Remedies
John Fellas and Benjamin Thompson
CHAPTER 11: Enforceability
Thierry Calame and Martin Aebi
TABLE OF AUTHORITIES
INDEX
APPENDICIES ON CD ROM
CODES OF ETHICS
AAA Code of Ethics for Arbitrators in Commercial Disputes (2004)
IBA Rules of Ethics for International Arbitrators (1986)
IBA Guidelines on Conflicts of Interest in International Arbitration (2004)
INTERNATIONAL CONVENTIONS
European Convention on International Commercial Arbitration (April 21, 1961)
New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards (June 10, 1958)
PROTOCOLS AND GUIDELINES
CPR Protocol on Disclosure of Documents and Presentation of Witnesses in Commercial Arbitration (2009)
IBA Guidelines for Drafting International Arbitration Clauses (2010)
IBA Rules on the Taking of Evidence in International Arbitration (2010)
ICDR Guidelines for Arbitrators Concerning Exchanges of Information
RULES
AAA Commercial Arbitration Rules and Mediation Procedures including Procedures for Large, Complex Commercial Disputes (2009)
AAA Supplementary Rules for the Resolution of Patent Disputes (2006)
CIETAC Arbitration Rules (2005)
CPR Non-Administered Arbitration Rules (2007)
CPR Rules for Non-Administered Arbitration of International Disputes (2007)
CPR Rules for Non-Administered Arbitration of Patent & Trade Secret Disputes (2005)
HKIAC Administered Arbitration Rules (2008)
HKIAC Procedures for the Administration of International Arbitration (2005)
ICANN UDRP Rules (2009)
ICC Arbitration Rules (2012)
ICC Arbitration Rules (1998)
ICDR Arbitration Rules (2009)
JAMS Arbitration Rules (2010)
JAMS International Arbitration Rules (2011)
LCIA Arbitration Rules (1998)
SIAC Arbitration Rules (2010)
Swiss Rules of International Arbitration (2006)
UNCITRAL Arbitration Rules (2010)
WIPO Arbitration, Mediation and Expert Determination Rules and Clauses (2002)
STAUTES
English Arbitration Act of 1996
French Code of Civil Procedure, Book Four (Arbitration Legislation of 1981)
Swiss Private International Law Act of 1987, Chapter 12, International Arbitration
UNCITRAL Model Law on International Commercial Arbitration (2006)
United States Federal Arbitration Act
MISCELLANEOUS
Administrative Rules Comparison Table
About the Editor:
Thomas D. Halket is an attorney practicing in New York. He divides his time between his corporate and commercial technology law practice, his arbitration and mediation work both as counsel and neutral and law school teaching. He is a Partner at Halket Weitz LLP, an associate member of Tanfield Chambers in London (for arbitration matters) and an Adjunct Professor of Law at the Fordham University School of Law where he teaches courses on International Arbitration and on Business Planning for the Entrepreneurial Enterprise. Prior to forming Halket Weitz, he was the Partner in charge of the Commercial Technology Practice in the New York Office of Bingham McCutchen LLP.
A Chartered Arbitrator, Fellow of the Chartered Institute of Arbitrators and Fellow of the College of Commercial Arbitrators, Mr. Halket has been an arbitrator and mediator for over 25 years. He is a member of arbitral panels around the world. They include those of the American Arbitration Association, the CPR Institute for Dispute Resolution, the Chartered Institute of Arbitrators, the Singapore International Arbitration Centre, the Kuala Lumpur Regional Centre for Arbitration, the Hong Kong International Arbitration Centre and the World Intellectual Property Organization. He has served as an arbitrator for the International Chamber of Commerce and is a member of the London Court of International Arbitration.
He is the Deputy Chairman of the Board of Management and the Chairman of the Practice and Standards Committee of the Chartered Institute of Arbitrators and has been Chairman of Chartered Institute's Technology Subcommittee and Chairman of the its New York Chapter. He is the Chairman of the Technology Advisory Committee of the American Arbitration Association and a member of the Scottish Arbitration Centre’s Arbitral Appointments Committee. Other positions he has held include Chairman of the Section of Science and Technology of the American Bar Association, Chairman of the Subcommittee on Software and the Uniform Commercial Code of the Association of the Bar of the City of New York and member of Task Force on IT in Arbitration of the ICC Commission on Arbitration.
Mr. Halket holds a law degree from the Columbia University School of Law and bachelors and masters degrees in physics from the Massachusetts Institute of Technology.
Contributors Include:
Martin Aebi, Lenz & Staehelin
James Bridgeman, Lamb Chambers
Thierry Calame, Lenz & Staehelin
Steven A. Certilman, Steven A. Certilman, PC
David L. Evans, Hanify & King
John Fellas, Hughes Hubbard & Reed LLP
Theodore J. Folkman, Hanify & King, P.C.
Todd Ryan Hambidge, Fulbright & Jaworski LLP
Jamie Hu, Fulbright & Jaworski L.L.P.
Laura A. Kaster, Independent Arbitrator and Mediator
Richard Kreindler, Shearman & Sterling LLP
Joel Lutzker, Ocean Tomo, LLC
Susan H. Nycum, Arbitrator and Mediator of High Technology Disputes
Frank Politano, K&L Gates
Anna G. Tevini, Shearman & Sterling LLP
Benjamin Thompson, Hughes Hubbard & Reed LLP
Joseph P. Zammit, Fulbright & Jaworski LLP
"The thesis of this new book is that arbitration is a particularly effective method for the resolution of international IP disputes, and the text proves that claim to be true. The 11 chapters focus on the particular characteristics of IP disputes rather than treating them as merely a subsidiary variation of international arbitration, providing a wealth of useful information for both IP lawyers new to international arbitration and arbitration generalists dealing with IP cases."
-James Carter, Special Counsel, Wilmer Hale
"Finally the practitioner of IP law and the Corporate user has a comprehensive guide to arbitration practise in this important field. The book covers all the essential elements of the arbitral process, but with a particular emphasis on IP disputes. It deals with the topic in a clear, concise and comprehensible manner. Essential reading for anyone interested in IP and the resolution of disputed that inevitably arise therefrom."
-Wolf von Kumberg, European Legal Director Assistant General Counsel, Northrop Grumman Corporation
"Arbitration of International Intellectual Property Disputes does an excellent job of filling a gap at the intersection of international arbitration and intellectual property disputes. Halket and his team cover the most important and difficult topics and do so lucidly and in depth. Even the experienced practitioner, whether counsel or arbitrator, will find much that is new and useful."
-Stephen P. Gilbert, Fellow of The College of Commercial Arbitrators; Fellow of The Chartered Institute of Arbitrators; The Law Office of Stephen P. Gilbert (former Partner, Bryan Cave LLP and Co-Leader of Intellectual Property Client Service Group).
"Tom Halket's thorough and comprehensive treatise is a must-read for all practitioners and neutrals whose work includes the arbitration of international IP matters. His careful consideration of the many issues that arise, and his thoughtful suggestions for approaching and resolving them, make this an indispensible desktop item. I recommend it without reservation."
-Hon. Timothy K. Lewis, Counsel Schnader Harrison Segal & Lewis is a former federal appeals court judge and is Co-Chair of Schnader's Appellate Practice Group
"This treatise will be a valuable resource for those engaged in international arbitration of IP (and other) disputes. In addition to clearly explaining the procedures of the various arbitration regimes and the law that governs them, it provides practical guidance regarding the strategic and tactical issues that confront the practitioner."
-Joseph Angland, Partner, White and Case, former Chair of the American Bar Association (ABA) Section of Antitrust Law
"Except perhaps for copyrights to some extent, IP rights are far from uniform around the globe. So are the challenges that arise when two parties from different countries face a dispute. This book provides a valuable easy-to-use manual for IP arbitration by explaining the basic concepts and principal issues that can arise when arbitrating international IP disputes. What makes this book special is that it also provides for in-depth analysis on more complex and unique IP arbitration issues to the more seasoned reader. A truly indispensable work that arbitration practitioners should have on their bookshelf."
-Christian P. Alberti, Assistant Vice President, International Centre for Dispute Resolution (ICDR)
"The explosion of intellectual property disputes over the past few years, the length and expense of court proceedings, the unpredictability of results on appeals in court and the cross border nature of many intellectual property disputes, makes arbitration particularly attractive for the resolution of these disputes. This volume fills an important need in providing both practical and theoretical information about the alternative, arbitration, which can be crafted to achieve a more expeditious, cost effective and final outcome enforceable across borders."
-Edna Sussman, Arbitrator, FCIArb; Mediator; Distinguished Practitioner in Residence, Fordham Law School
"A powerful, practical treatise that explores the unique aspects of the arbitral process as pertaining to international IP disputes, as well as weighs the benefits of arbitration in the international arena. This book is a succinct and indispensible guide covering the essential steps to arbitrating international IP disputes; written by experts in the field and crammed with useful real world scenarios."
-Vincent A. Sireci, Esq., General Counsel of The Echo Design Group, Inc.
"Tom Halket's volume on Arbitration of International Intellectual Property Disputes exhaustively, authoritatively and thoroughly discusses all significant aspects of the international arbitral process and related issues as they pertain to use in IP disputes. This work is written in a direct teaching style that is very approachable, inviting and conveys its information in a readily understandable manner. As relatively little material exists in this increasing important high-stakes area, this volume fills a gaping need in the available reference literature. It is a welcome and, no doubt, will be an oft-used addition to the library of those involved in using arbitration to resolve these disputes including corporate counsel, outside counsel, institutions and, like me, arbitrators. This work will also significantly aid those involved with IP disputes who contemplate using arbitration as well as those who are just interested in exploring this fascinating area for their own education."
-Peter L. Michaelson, Esq., Arbitrator and Mediator, Michaelson ADR Chambers, LLC, New York; Trustee, Chartered Institute of Arbitrators, London
"The success of companies operating globally in technology or other innovative industries is linked to their ability to enter into favorable commercial agreements involving their valuable intellectual property assets. Effectively enforcing and resolving disputes that may arise in connection with these transactions is equally critical. This book, which provides a real argument for arbitration as the most efficient way to resolve intellectual property disputes as well as a thorough guide to the principal issues in the arbitral process, is a must reference for counsel to the IP-centric companies themselves, as well as investors and others who would finance and conduct business transactions with them."
-Scott Ring, General Counsel, Bessemer Venture Partners
"This book comes as an invaluable contribution to the edifice of arbitration - and its specialized track of intellectual property disputes - by a distinguished group of experts who have clearly demonstrated that there is always a different kettle of fish. This scholarly work not only provides readers with insightful principles and practices, it also comes as a timely and germane analysis of distilled and significant topics. I truly commend this work to all those with a vested interest in arbitration and intellectual property rights. It is indeed a magnum opus contribution to an affluent multidisciplinary field."
- Dr. Mohamed S. Abdel Wahab, Assistant Professor Faculty of Law, Cairo University - Egypt; Founding Partner and Head of the International Arbitration Group, Zulficar & Partners Law Firm; Chair, Technology Sub-committee, CIArb
"This book is an invaluable resource to anyone who becomes involved in a non-US arbitration involving intellectual property. Each of the authors brings a different view on this subject and each has some tremendous insight that will assist anyone who is not familiar with the specific issues relating to such matters. The book is structured in such a way that makes it easy to focus on the particular matter of interest."
-Ronald Prague, Executive Vice President and General Counsel, Synchronoss Technologies, Inc.
