Intellectual property (IP) rights have become a truly
international phenomenon. Technology is constantly changing. So too
are the ways in which businesses seek to protect proprietary
information. Indeed, the concept of what is "proprietary"
also continues to develop. This development, together with the
growth of international transactions, has seen the potential for
cross-border IP disputes increase significantly. Meanwhile, the
economic downturn continues to squeeze litigation budgets. In such
circumstances, there is an incentive for stakeholders to seek a
more adaptable, comprehensive and efficient resolution to IP
disputes than court litigation. This makes international
arbitration an increasingly attractive option.
Types of IP Disputes Being Arbitrated
Arbitration is, by no means, a new method to resolve IP
disputes. Arbitration is regularly used in more traditional
commercial disputes concerning IP, primarily license disputes. It
is also increasingly being used in disputes that are normally
considered to be the jurisdiction of domestic courts, including the
validity of trade-marks and patents that are used in multiple
jurisdictions. All of the major arbitration centres, such as the
ICC, the London Court of International Arbitration and the World
Intellectual Property Organization (WIPO) Arbitration and Mediation
Center, have adapted their arbitration rules to better suit IP
disputes. As a result, the number of IP cases being heard by these
centres continues to rise.
Benefits of International Arbitration
The increased use of arbitration to resolve IP disputes can be
explained by several significant advantages arbitration offers in
comparison to litigation:
Choice of decision maker: Parties are free to
choose their arbitral tribunal and thereby ensure that their
dispute is resolved by decision makers they trust, that they
consider to be independent, impartial and competent in the relevant
Flexible process: The arbitral process can be
designed and adapted by the parties to best fit their commercial
relationship or a specific dispute. Such adaptations can include
processes to ensure that confidentiality is maintained, and setting
strict parameters on discovery rights, reducing the overall cost of
the arbitration. Parties can also chose the most convenient place
and language of the arbitration. On the other hand, an arbitration
can be designed to accommodate a large, complex dispute, involving
multiple parties, from various jurisdictions.
Speed and efficiency: Several features of
international arbitration favour faster and more efficient
proceedings, including a greater flexibility in schedules, the
absence of appeal routes, the absence of a pre-existing set of
procedural rules and backlogs of cases in domestic courts.
Universal solution: Arbitration has the
potential of reaching a universal solution to an issue that relates
to multiple jurisdictions through one proceeding. An international
arbitral award rendered in one country can be enforced in another.
The New York Convention on the Recognition and Enforcement of
Arbitral Awards has been ratified by over 140 countries and,
subject only to a few limited exceptions, requires signatory states
to recognize arbitral awards rendered in other countries. In
addition, courts in a number of jurisdictions, including the United
States, the United Kingdom and Canada, have confirmed that issues
of validity may be resolved by arbitration, and do not require
individual domestic court proceedings. A single proceeding also has
the potential of greatly reducing litigation costs.
Confidentiality: A significant concern in IP
disputes is the protection of technical and commercial information.
Arbitration allows the parties to control the manner and extent of
the dissemination of sensitive information, ensuring that it
With a full understanding of the array of options available,
businesses can chose a dispute resolution process that is effective
and efficient in meeting their business needs.
Heenan Blaikie LLP has been repeatedly recognized as one of the
top intellectual property litigation firms in Canada. Its lawyers
also boast significant experience in the field of international
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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