The World of Intellectual Property and the Decision to Arbitrate

Abstract

AT LEAST a decade ago, a discussion began in earnest about international arbitration of intellectual property (‘IP’) disputes. Certainly, this discussion was ongoing before then, but the topic took on added significance as the number of transactions involving IP increased dramatically. IP represented a big sector of industry, and arbitration institutions and specialists were asking how arbitration might become part of this growing sector as it had become a part of other sectors. At that time, there were at least two perceptions about the IP sector and the arbitration of IP disputes. First, the IP sector preferred litigation to arbitration of its disputes. Secondly, the concerns of the IP sector turned on the assertion that IP disputes were fundamentally different from other disputes and that such differences were not particularly well served by the institutions of arbitration. What has followed is a decade-long effort by the arbitration community to address the special nature of IP disputes. Despite that decade of effort, it appears the IP world remains hesitant to choose arbitration. This article attempts to explain why this is the case. The substantive effort to increase the appeal of arbitration for IP over this past decade has been threefold. First, given that a major advantage of arbitration is party control, it was thought that the special nature and needs of IP disputes might be addressed by special arbitration rules, and, indeed, the World Intellectual Property Organization (WIPO) proceeded to prepare precisely just such a set of rules.1 In October 1994, at the ICC, AAA and ICSID Joint Colloquium on International Commercial Arbitration held that year, a part of the programme, in the form of a panel comprised of Paul Friedland, Jan Paulsson and myself, was devoted to discussing international arbitration and intellectual property, and the WIPO Rules in particular. …