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  • The Role of Arbitration in International Intellectual Property Defense PPT Slideshow

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    Adam R. Tanielian
    189 просмотров33 страницы
    This dissertation focuses on intellectual property disputes with a dual aim of proposing ways to improve time and cost efficiencies in existing dispute resolution processes, and to further the cause of development of new systems. Litigation and arbitration, the two major methods of binding resolution, are reviewed for their strengths and weaknesses. Arbitration has weaknesses including the mutual consent requirement, lack of appeal, absence of a system of case law, and jurisdictional variations relating to arbitrability of certain IP disputes. However, advantages of arbitration such as confidentiality, international applicability under the New York Convention, limited discovery, and use of specialized tribunals support a recommendation of arbitration as the better method. Special attention is paid to multijurisdictional disputes and to internet infringement. Statutes from numerous nations are reviewed, although the bulk of the comparative research pertains to Canada and the USA. The objective is to clarify important strategic business issues for participants in NAFTA. Patents, trademarks, copyrights, licensing, and trade secrets court cases from the USA and Canada are reviewed alongside corresponding statutes, providing analyses of similarities and differences in IP law between the nations. Lex loci and lex fori differences between nations like Canada and the USA make arbitration more appealing than litigation. Analyses of domestic arbitration laws and cases show national policies strongly favor arbitration. UNCITRAL Model Law nations such as Canada exhibit minor differences when compared to the USA, but the Federal Arbitration Act is considered comparable to Model Law implementing statutes in practice. Recognition and enforcement of foreign and domestic arbitral awards is available, and courts are most often unwilling to disturb awards rendered by tribunals. Rules of arbitration from UNCITRAL, LCIA, ICC, and WIPO are reviewed. Court cases, primarily from the USA and Canada, are examined to show interconnectedness between the FAA, Model Law, and rules of arbitration. WIPO is determined to offer the best services for IP disputes, although the degree of control over the arbitration process allows parties to tailor any proceedings to fit their particular needs. Online dispute resolution is considered a key aspect of the bright future of arbitration. Upon reviewing court cases, statutes, treaties, and expert opinions, I recommend that internet infringement disputes be referred to compulsory arbitration. Arbitration is recommended for any number of IP disputes, and thus parties to contracts are recommended to include clear and comprehensive provisions in contractual clauses. Greater harmonization of public policy is recommended, both within large nation-states such as the USA and internationally. The continued evolution of international trade dispute resolution is supported.

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    This dissertation focuses on intellectual property disputes with a dual aim of proposing ways to improve time and cost efficiencies in existing dispute resolution processes, and to further the cause of development of new systems. Litigation and arbitration, the two major methods of binding resolution, are reviewed for their strengths and weaknesses. Arbitration has weaknesses including the mutual consent requirement, lack of appeal, absence of a system of case law, and jurisdictional variations relating to arbitrability of certain IP disputes. However, advantages of arbitration such as confidentiality, international applicability under the New York Convention, limited discovery, and use of specialized tribunals support a recommendation of arbitration as the better method. Special attention is paid to multijurisdictional disputes and to internet infringement. Statutes from numerous nations are reviewed, although the bulk of the comparative research pertains to Canada and the USA. The objective is to clarify important strategic business issues for participants in NAFTA. Patents, trademarks, copyrights, licensing, and trade secrets court cases from the USA and Canada are reviewed alongside corresponding statutes, providing analyses of similarities and differences in IP law between the nations. Lex loci and lex fori differences between nations like Canada and the USA make arbitration more appealing than litigation. Analyses of domestic arbitration laws and cases show national policies strongly favor arbitration. UNCITRAL Model Law nations such as Canada exhibit minor differences when compared to the USA, but the Federal Arbitration Act is considered comparable to Model Law implementing statutes in practice. Recognition and enforcement of foreign and domestic arbitral awards is available, and courts are most often unwilling to disturb awards rendered by tribunals. Rules of arbitration from UNCITRAL, LCIA, ICC, and WIPO are reviewed. Court cases, primarily from the USA and Canada, are examined to show interconnectedness between the FAA, Model Law, and rules of arbitration. WIPO is determined to offer the best services for IP disputes, although the degree of control over the arbitration process allows parties to tailor any proceedings to fit their particular needs. Online dispute resolution is considered a key aspect of the bright future of arbitration. Upon reviewing court cases, statutes, treaties, and expert opinions, I recommend that internet infringement disputes be referred to compulsory arbitration. Arbitration is recommended for any number of IP disputes, and thus parties to contracts are recommended to include clear and comprehensive provisions in contractual clauses. Greater harmonization of public policy is recommended, both within large nation-states such as the USA and internationally. The continued evolution of international trade dispute resolution is supported.

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    189 просмотров33 страницы

    The Role of Arbitration in International Intellectual Property Defense PPT Slideshow

    Загружено:

    Adam R. Tanielian
    This dissertation focuses on intellectual property disputes with a dual aim of proposing ways to improve time and cost efficiencies in existing dispute resolution processes, and to further the cause of development of new systems. Litigation and arbitration, the two major methods of binding resolution, are reviewed for their strengths and weaknesses. Arbitration has weaknesses including the mutual consent requirement, lack of appeal, absence of a system of case law, and jurisdictional variations relating to arbitrability of certain IP disputes. However, advantages of arbitration such as confidentiality, international applicability under the New York Convention, limited discovery, and use of specialized tribunals support a recommendation of arbitration as the better method. Special attention is paid to multijurisdictional disputes and to internet infringement. Statutes from numerous nations are reviewed, although the bulk of the comparative research pertains to Canada and the USA. The objective is to clarify important strategic business issues for participants in NAFTA. Patents, trademarks, copyrights, licensing, and trade secrets court cases from the USA and Canada are reviewed alongside corresponding statutes, providing analyses of similarities and differences in IP law between the nations. Lex loci and lex fori differences between nations like Canada and the USA make arbitration more appealing than litigation. Analyses of domestic arbitration laws and cases show national policies strongly favor arbitration. UNCITRAL Model Law nations such as Canada exhibit minor differences when compared to the USA, but the Federal Arbitration Act is considered comparable to Model Law implementing statutes in practice. Recognition and enforcement of foreign and domestic arbitral awards is available, and courts are most often unwilling to disturb awards rendered by tribunals. Rules of arbitration from UNCITRAL, LCIA, ICC, and WIPO are reviewed. Court cases, primarily from the USA and Canada, are examined to show interconnectedness between the FAA, Model Law, and rules of arbitration. WIPO is determined to offer the best services for IP disputes, although the degree of control over the arbitration process allows parties to tailor any proceedings to fit their particular needs. Online dispute resolution is considered a key aspect of the bright future of arbitration. Upon reviewing court cases, statutes, treaties, and expert opinions, I recommend that internet infringement disputes be referred to compulsory arbitration. Arbitration is recommended for any number of IP disputes, and thus parties to contracts are recommended to include clear and comprehensive provisions in contractual clauses. Greater harmonization of public policy is recommended, both within large nation-states such as the USA and internationally. The continued evolution of international trade dispute resolution is supported.

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    Скачайте в формате PPTX, PDF, TXT или читайте онлайн в Scribd
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    из 33

    The Role of Arbitration in International Intellectual Property Dispute Resolution

    Adam Richard Tanielian An oral presentation to the Institute of International Studies at Ramkhamhaeng University in partial fulfillment of the requirements for the degree of

    Doctor of Laws July 2013

    Synopsis of Research
    IP disputes have become excessively costly and time consuming, especially when the scope is international

    Arbitration has emerged as a recommended method of resolving international disputes


    Comparison between arbitration and litigation on various points can confirm arbitrations strengths Comparing and contrasting US and Canadian legislation and case law, along with that in other nations, helps explain why arbitration is an attractive option Online dispute resolution can help solve persistent problems with jurisdiction and cooperation on internet infringement

    Preliminary Questions of Law


    Do sovereign nations have identical legal systems such that a single global litigation strategy may be used? Answer: no. Is there a binding alternative dispute resolution method available? Have nations formally accepted arbitration as a means of IP dispute resolution? Answer: yes, arbitration. Answer: Yes. Answer: Yes.

    Are arbitral awards internationally valid? Can all IP disputes be settled by arbitration?

    Answer: No.

    Patents

    TradeMarks

    Trade Secrets

    Intellectual Property
    Copyright

    Licenses

    A Brief History of IPRs


    Prior to 1880s 1880s - 1994 1994 - Present

    - Political grants - Statutes appeared in 1400s - Not international

    - Framework for intl protection - Many treaties drafted


    - Needed more support (TRIPS)

    - Intl apps in theory - Quasi harmonization - Online rights threatened - Growing high-level opposition

    Economic Value of IP
    At S&P 500 companies in the mid-1980s, tangible assets represented about 70% of total assets. By 2005, that number was replaced by intangible assets (Razgaitis, 2006).

    What is Arbitration?
    Contractual right Private Binding Less formal procedure Flexible construct Confidential International

    A Brief History of Arbitration Law


    Commercial arbitration must have existed since the dawn of commerce. Lord Mustill (1989)
    Pre-League of Nations
    Common Law judicial hostility toward arbitration Napoleonic Codes restricted arbitration to pre-existing disputes

    1920s WWII
    Disorganized system Diverse legislation, interpretation and application

    Post WWII - 1985


    Changing attitudes Increasing use of international commercial arbitration NY Convention

    Model Law Era


    Global standards Judicial support Range of institutional services

    Source: UN Conference on Trade and Development (2005)

    Canada and the United States: Friendly English Common Law Neighbors

    If these two nations have significant differences in IP legal systems, then we can presume that each countrys system is unique.

    Greater complexity involved in international IP litigation gives arbitration greater strengths

    General Systemic Differences

    United States courts are busier by volume and rate. Canadian courts more frequently cite US cases than US courts cite Canadian cases. Canada is a Constitutional Monarchy

    Parliament, privy council, etc.

    Canada has a stronger tie to Britain and the colonial system. No Provincial Supreme Courts in Canada; appeals from provincial courts are directed to Federal Supreme Court

    Comparative Patent Law


    CANADA

    UNITED STATES

    Jury Trials - - Constitution Am. 6-7 Claim Construction - - Markman v. Westview Instruments (1996)
    No Seventh Amendment right to jury trial in patent cases. Appeals judges may conduct de novo reviews of claim construction.

    Judge-only No Markman Hearings


    Realsearch v. Valone Kone Brunette (2003) Preliminary points of law are too often treacherous short cuts. Their price can be delay and expense.

    High reversal rate. CVI/Beta Ventures I & II

    Comparative Patent Law 2


    CANADA

    UNITED STATES

    Doctrine of Equivalents - - Graver Tank v. Linde Air Products (1950)


    -

    Purposive Approach - Catnic Components v. Hill & Smith (House of Lords 1980)
    If the distinctive difference between two patents is a non-essential part, and if there is otherwise equivalence between the objects, then infringement may be more easily qualified. - Free World Trust v. Electro Sante (2001) - Whirlpool v. Camco (2001)

    - Warner-Jenkinson v. Hilton Davis (1997)

    Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?

    Is Patent Validity Arbitrable?


    Policy differences between many nations on this issue limit the extent to which certain arbitral awards may be valid.

    SA No

    US Yes

    BE Yes

    FR No

    IN No*

    DE No

    JP Yes

    CN No

    Comparative Trademark Law

    Non-traditional marks more easily registered. Owner must prove current use.

    Playboy v. Germain (1987) marks must be something that can be seen. No requirement to demonstrate use.

    Comparative Copyright Law


    CANADA

    UNITED STATES

    - Registration not necessary for statutory damages. - Parody is not considered fair dealing. (Michelin & Cie v. NAATGWUC, 1997) - Downloading for personal use may not be infringement. (BMG v. Doe, 2004) - Infringement policies considered more consumer and individual-friendly.

    - Copyright must be registered for court to hold jurisdiction in infringement suit. (Well-Made Toy v. Goffa International, 2003) Damages are not available without prior registration. (Bouchat v. Bon-Ton Dept. Stores, 2007) - Parody falls within fair use. - Downloading is illegal. (BMG v. Gonzalez, 2005; Capitol v. Thomas, 2006; Sony BMG v. Tenenbaum, 2010) - Infringement policies favor corporations and rights owners.

    Internet Law: A World Divided


    Statutes and treaties generally prohibit infringement at commercial levels. Fair use exceptions dominate debates over enforcement. Legislative branches are more harmonized than executive and judicial. Economic and financial arguments support non-enforcement. De facto legalization of file sharing

    Comparative Licensing Law

    Perhaps the worlds foremost opponent of compulsory licensing of pharmaceuticals. Licensee may challenge validity of underlying patent without stopping royalties payment or being sued for infringement (MedImmune v. Genentech, 2007) Co-owner may independently license patent. (Schering v. Roussel-Uclaf, 1997)

    Access to Medicines Regime allows compulsory licensing of pharmaceuticals. Licensees are estopped from challenging validity of patents and must pay royalties if patent found invalid. Co-owner may not independently license patent. (Forget v. Specialty Tools, 1995)

    A Comparison of Trade Secrets Laws


    CANADA

    UNITED STATES

    Subjects of private civil law granted contractual protection. Provincial or Superior courts hold jurisdiction.

    Economic Espionage Act grants specific statutory protection and potential for criminal remedies. State or Federal courts may hold jurisdiction.

    Litigation

    versus

    Arbitration

    [T]he nominal winner is often a real loser in fees, expenses, and a waste of time Abe Lincoln as quoted by Metcalf (2008). The civil justice system in the United States is too expensive and too complex; a lawsuit takes too long and costs too much. Colorado Justice Kourliss before Congress (Butterfield et al 2011) 33% or greater reversal

    Limited discovery Confidentiality Customized process Final and binding awards International effect Specialized tribunals Less adversarial process allows disputants to preserve a relationship FASTER AND CHEAPER

    Weaknesses of Arbitration

    Mutual consent requirement Lack of appeal Arbitrability of certain disputes No case law Possibly lower damages awarded in infringement cases as compared to jury verdicts

    Discovery: Deciding Factor

    High pretrial costs can essentially force parties out of litigation


    trial by attrition rather than by jury (Butterfield 2011) Discovery a kings ransom in US ex rel Julie McBride v. Halliburton (2011)

    Preservation costs can exceed millions per year for corporations (Butterfield 2011; Zubulake IV 2003; In re Genetically Modified Rice 2007) Patent trial discovery costs millions (Allgeyer 2007) EU privacy laws conflict with US court rules (In re Advocat Christopher X, 2007)

    Arbitration Case Law Comparison


    US FEDERAL ARBITRATION ACT

    UNCITRAL MODEL LAW IN CANADA

    Oldest arbitration act in the world - de facto Model Law statute


    - Preemptive (Southland v. Keating, 1984; Doctors Associates v. Casarotto, 1996) - Strong federal policy favoring arbitration (Agere v. Samsung, 2009) - Court will compel where agreement exists and dispute is within agreement (Javitch v. First Union, 2003)

    First nation to adopt Model Law


    - British and French systems historically antagonistic to arbitration (Scott v. Avery, 1855; Napoleonic Codes compromis darbitrage) - SCC unanimously endorsed arbitration (Seidel v. TELUS, 2011) - Courts routinely compel arbitration as per agreements

    Points of Arbitration Law


    USA

    CANADA

    - Separability/severability (Prima Paint v. Flood & Conklin, 1967) - Kompetenz-Kompetenz (First Options v. Kaplan, 1995) - Employment contracts other than transportation (Circuit City v. Adams, 2001) - Class-action only if consensual; not considered efficient (AT&T v. Concepcion, 2011; Stolt-Nielsen v. AnimalFeeds, 2010)

    - Separability/severability (Dell Computer v. Union des consommateurs, 2007) - Kompetenz-Kompetenz (Desputeaux v. Editions Couette, 2003; Rogers v. Muroff, 2007) - Employment contracts not a commercial relationship (Borowski v. Perforiertechnik, 1994 Alberta) - Class action only if consensual; not considered efficient (Bisaillon v. Concordia U., 2006)

    Contradictions in American Courts


    Agere v. Samsung (2009) Expired agreement used to compel arbitration Qualcomm v. Nokia (2006) Court ordered arbitration of infringement disputes which parties did not agree to submit to arbitration

    Arbitral Process
    WIPO ICC LCIA UNCITRAL

    1. Request/Notice

    2. Answer/Response

    3. # of arbitrators

    nomination

    appointment

    challenge

    4. Agree on seat, language, applicable rules of law, rules of evidence 5. Statements of claim and defense 7. Contests to jurisdiction 8. Proceedings experts, witnesses, evidence

    9. Awards : interim & final

    Limited Recourse against Awards


    New York Convention Article V Model Law Article 34
    Incapacity or invalidity of agreement under applicable laws Party not given opportunity to participate Award outside of scope of arbitration agreement

    FAA s.10
    Manifest disregard for law

    Online Dispute Resolution & the Future of Arbitration


    WIPO/ICANN UDRP
    About 2 months from submission to completion Unique opportunity to handle bad-faith infringement in arbitration Binding

    ICC
    DOCDEX (non-binding) NetCase

    Online copyright infringement could be handled through similar procedure

    Advantage: Arbitration

    Lower Cost

    Less Time

    More Control

    Confidential

    What Is Next?

    Counterfeiting and piracy pandemic suggests rights without remedies

    International patent trials complex, yielding


    unreliable results between jurisdictions Blue Ocean of unexplored opportunities

    Uncontested market space ready for growth

    International legal framework not in place

    IP rights inconsistently enforced under vague rules

    Recommendations
    Harmonize US State and Federal Districts

    Amend 9USC4 and/or28USC1391


    Multilateral agreement needed to extend UDRP platform to include copyright and trademarks

    Compulsory ODR for Internet Infringement

    International Class Arbitration

    Remedy for counterfeiting/piracy victims and franchisees


    Contemplate disputes in contracts; tailor arbitration clauses; use negotiation and pre-dispute ADR

    Take a proactive approach to disputes

    An Option Rather Than Substitute


    Disputants should always have at least two potential methods for binding dispute resolution.

    Litigation is established and not threatened as a dispute resolution mechanism.

    Parties to disputes should have multiple options to resolve their differences.

    Arbitration is a cost efficient alternative that, if allowed, can provide solutions to many persistent problems.

    References Cited in Slides


    Lord Mustill (1989). Arbitration: History and Background. 6:2 J. Intl Arb. 43. Razgaitis, R. (2006). US/Canadian Licensing In 2005-Survey Results: Licensing Foundation of LES. United National Conference on Trade and Development (2005). Dispute Settlement. UNCTAD/EDM/Misc.232/Add.38. Retrieved from http://unctad.org/en/Docs/edmmisc232add38_en.pdf Metcalf, C. (2008). Resolution of Patent and Technology Disputes by Arbitration and Mediation: A View from the United States. Arbitration, 74, 385-394. Butterfield, W., Hill, T., Hubbard, W., and Kourlis, J.R. (2011). United States House of Representatives Judiciary Committee Hearing on: The Costs and Burdens of Civil Discovery. Retrieved from http://judiciary.house.gov/hearings/hear_12132011_2.html

    References Continued
    Moore, K. (2001). Are District Court Judges Equipped to Resolve Patent Cases? Harvard Journal of Law & Technology, 15(1), 1-39. David Allgeyer, In Search of Lower Cost Resolution: Using Arbitration to Resolve Patent Disputes, 12 Conflict Management 9 (2007).

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