Arbitration

in IP/technology disputes
Ernst-Jan Louwers
Jaarvergadering Orde van Octrooigemachtigden
Eindhoven, 11 April 2014

We have always had wars

And we have weird

inventions and
patents

And arbitration

Agenda

Typical IP/tech related conflicts

ADR differences and reasons
IP & tech specifics
Unitary Patent and ADR
Applicable law and enforcement
Draft Dutch arbitration act
Brainport Technology Arbitration Institute

Intro
Boutique firm: lean & mean in the premier league
Risk management, compliance and governance
Advice, contracts and litigation
Enable and empower
Killing showstoppers
On top of tech developments with 8 lawyers and CTO
Board member Brainport Centre for Technology & Law

Typical IP/tech conflicts

Creation and R&D
o
o
o
o

Inventorship & (co)ownership

Background/foreground IP
Cross licensing
Payment

Exploitation
o
o
o
o
o

Infringement
Licensing and distribution
Royalties
Exclusivity
Termination

ADR: different tasts

Mediation
Informal consensual:
may open new
cooperation in future
Mediator to assist
Mediator not to impose
decision or solution
Settlement = contract
Leaves open other
dispute resolution
Preventing costly and
lenghty procedures

Arbitration / expedited
arbitration
Formal consensual
procedure

Expert determination
Consensual procedure

Chosen arbitrator(s) decide Expert(s) to decide

Binding decision (award)

Binding or non-binding

In principle internationally
enforceable
Final unless arbitral appeal
or remission
Preventing costly and
lenghty procedures

Experts opinion =
contract
Non-binding leaves open
other procedures
Preventing costly and
lenghty procedures

Why choose ADR in IP/tech?

Single procedure
o Multiple jurisdictions
o Avoid expense and complexity multi-jurisdictional litigation

o Avoid risk of inconsistent results

Party control
o More control by parties
o Selection of suitable decision-makers
o Parties may jointly choose applicable law, place and
language

o Faster and efficient

o Cost savings

Why choose ADR in IP/tech?

Neutral expertise
o Law and technical background
o ADR can be neutral to law, language and institutional
culture of both parties
o Avoiding home court advantage for one party

Confidentiality
Finality of awards
Enforceability of awards
o New York Convention

Why no ADR?
Non contractual disputes
o Infringement
o Other unlawful behaviour, not under contract

But the parties may voluntarily submit to arbitration!

Publicity
Establish public legal precedent

IP specific complexity
Nature of IP - monopoly
Territoriality and internationality of IP
o Validity, recognition and enforcement of award
o Arbitrability: depending on affected national IP
o (In)validity only inter partes?
validity issues only effect between parties?
Dutch law: exclusive competence of court at The Hague
for instance Belgian law: arbitration erga omnes with third
party right to oppose decision; art 51 Belgian Patent Act

IP specific complexity
Possible limitations to arbitrability of validity

Applicable law
o Substantive law
Existence, invalidation
Ownership title
Scope of protection

o Procedural
Arbitrable?

IP specific issues

Composition of arbitral tribunal

Interim injunctions also ex parte?
Evidence: interim relief
Protecting confidential Information
o Confidentiality of arbitration
o Confidentiality of evidence inter partes

contractual arrangements or procedural order; or

confidentiality advisor

Experts

Technology specific issues

Composition of arbitration tribunal
o Specific expertise required?

o Engineer, IT expert, financial experts, forensic?

Interim measures required?

Partial solution attainable?

Unitary Patent & ADR

Patent mediation and arbitration centre
Disputes within scope of AUPC

Challenging arbitral award? Which court?

Validity and infringement: to be determined under lex
protectionis or lex proprietas?

Unitary Patent & ADR

Article 35(2) AUPC: patent may not be

revoked or limited in mediation or

arbitration proceedings

Article 79 AUPC: patent may not be

revoked or limited by way of settlement

Inter partes?

Unitary Patent & ADR

Preliminary questions to UPC
o Not by arbitrators (?)

Gordian knots to be solved by Unitary Patent

Court

Applicable law and

enforcement
WIPO Arbitration Rules: lex arbitri
o Procedural law to be determined by place of the
arbitration

But substantive law may be different

o Choice of law
o Private international law, including Rome I treaty

New York Convention of 1958

European Convention on International
Commercial Arbitration of 1961

Draft arbitration act NL

Remission introduced
Challenging arbitral award limited to court of
appeal (Hof) and Supreme Court (Hoge Raad)
o latter can be opted out advisable!

Electronic arbitration enacted

o advantage over court

Brainport Technology Arbitration

Institute
Initiative of Brainport Centre for Technology & Law

www.brainporttechlaw.nl

BTAI: why?
Existing legal frameworks may no longer fit new
realities created by technology
Increased and ever increasing complexity
Courts no specialists
No specialised ADR institute for technology
BTAI close to the industry
Supported by courts

BTAI: scope
National and international disputes
o technology
o tech company

Technology
o industrial high-tech, IT, automotive, nanotechnology, biotechnology,
gentechnology, robotics etc.
o but also manufacturing and low-tech

Examples
o
o
o
o

technology licenses, IP issues, infringement

joint R&D, open innovation, co-creation, consortium agreements
distribution and marketing agreements
IT contracts, Internet disputes, 3D printing/additive manufacturing

BTAI: advantages

Confidentiality
Cost effectiveness
Time
Specialists speaking the industrys language
List of specialists non-exhaustive
Documents to be exchanged electronically
Hearings to take place by videoconferencing
Urgent matters: arbitral injunction

BTAI: road to realisation

Independent foundation (stichting)
Organisation
o board to control foundation and appoint mediators,
independent experts or arbitrators
o secretariat for administrative matters
o supervisory board
o board and secretariat members cannot be appointed
as mediator, expert or arbitrator

BTAI: many challenges

Composition of board, supervisory board

Funding
Rules and clauses
Arbitral appeal?
List of independent arbitrators
o Criteria, disciplines
o Share lists with other organisations like WIPO

Publication of decisions vs confidentiality

Collaboration and training

ADR: sound alternative!

But not without risk

www.louwersadvocaten.nl
louwers@louwersadvocaten.nl
040 2393203
06 52 048154