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Published: Fri, 02 Feb 2018
The Arbitrability of Intellectual Property Disputes
I’ve included my notes that are particularly relevant for the introduction. These notes include assumptions that guide the rest of the paper, and as such should probably be included in the final paper in some form. However, this is by no means a complete basis for the introduction – these are just things that I thought were important along the way, and helped me to set the context for my own portion of the paper.
The arbitration process as contrasted with the judicial process
Arbitration process in general:
Arbitration is a procedure in which a dispute is submitted, by agreement of the parties, to one or more arbitrators who make a binding decision on the dispute
In choosing arbitration, the parties opt for a private dispute resolution procedure instead of going to court
Like litigation, a neutral third party renders a decision after a hearing in which the disputants are given an opportunity to set out their position
Consensual: can only take place if both parties have agreed to it
Parties choose the arbitrators
Arbitrator only has the powers which the parties have conferred on him
However, the arbitrator addresses the parties’ legal positions on the basis of the applicable substantive law or other rule system
Parties expect the arbitrator to render a comprehensive, final and enforceable decision of the dispute, and to do so fairly and efficiently
At the adjudicative end of the ADR spectrum, but with more emphasis on consensus and finding common ground, with alternative solutions than judiciary
Patent infringement process (litigation):
Patent holder files suit against an alleged infringer
Generally, the alleged infringer will challenge the validity as part of the defence to infringement
If the patent is held to be valid and infringed, the patentee may be awarded damages as compensation, and a permanent injunction that requires the infringer to cease the infringing activity
If the patent is held to be invalid, the patent holder’s monopoly rights are revoked and the accused is free to continue the activity
Important – distinction between in rem and in personam
Application of arbitration to IP law and generally cited advantages over litigation (this is not included in the paper – the paper deals only with the social policy and legal implications of whether or not to arbitrate IP rights, and not the more personalized and party-specific decision of whether arbitration is right in a particular case)
Note: for disadvantages, see Lim, page 175 (very cynical, not sure I agree with her)
Takes less time – IP monopolies exist for a fixed period of years
See Lim, page 168
Perhaps lower legal fees
See Lim, page 169
Can select arbitrators with relevant experience in IP law, and perhaps the particular technology
See Lim, page 171
BUT, debate over impartiality – “Party-appointed arbitrators may be handpicked specifically to construe the meaning of a patent claim favorably to the appointing party” (Lim, page 180)
Preserves business relationships
Some cite confidentiality of the dispute as a benefit for the parties – explored later in the paper (whether this is good for society and whether it impedes the development of the law and science)
Contractual nature of arbitration allows parties to have a greater role in the procedural law that governs the resolution of their dispute – selection or exclusion of appropriate remedies (Smith)
No all-or-nothing outcomes – royalty payments, loss of patent; arbitration allows for flexible and creative solutions
Predictability – avoids possibility that a court will have to apply foreign law, or that an international jurisdictional dispute will take place
International enforcement of arbitral awards – widespread adoption of New York Convention (each party to the convention agrees to enforce arbitral awards pursuant to the convention)
Important to recognize that arbitration is not the best solution in every dispute; litigation or other ADR techniques such as mediation may be more appropriate to a particular business situation
The IP “bargain”
IP law seeks to “provide incentives for innovation…by establishing enforceable property rights for the creators of new and useful products, more efficient processes, and original works of expression…Simply put, intellectual property law grants rights to inventors and innovators so that they can profit from their developments.” (Lemley, page 288)
1. Arbitrability of Intellectual Property Rights: Policy Considerations
Although arbitration has not traditionally been accepted as a dispute resolution mechanism in intellectual property (IP) law, it is gaining international popularity for the settlement of such disputes. The number and complexity of IP cases, combined with the increasingly international nature of the disputes is rendering arbitration an attractive alternative for decision-makers at the judicial and legislative levels. Disputants are also encouraged to arbitrate with the promise of lesser time and cost investments, the power to select adjudicators with relevant experience, confidentiality of the process, the ability to preserve business relationships, and ease of enforcement. Before an IP dispute may be resolved by arbitration however, the objective arbitrability of the subject-matter in question must be determined, based on the national laws of the jurisdiction in which the decision will be carried out. IP-producing states can be broadly grouped into four categories, based on legislatively-imposed limitations on arbitrability. These are: states that reserve exclusive jurisdiction to state courts or national IP offices; states that restrict the free disposal by the parties of some IP rights; states that place public policy restrictions which may be triggered where rights or claims affect the position of third parties; and states that limit the effects of arbitral decisions to an inter partes effect.  This categorization is “particularly relevant to both the jurisdiction of the arbitrator and the enforcement of arbitral awards under the 1958 New York Convention.”  The national laws of several states, and their limitations on the arbitrability of IP rights, will be delimited in later sections. This section examines the policy considerations of allowing disputants to usurp roles that have traditionally been reserved to the judiciary and other administrative bodies, and to instead resolve intellectual property disputes through arbitration.
In discussing the suitability of arbitration for IP disputes, authors frequently begin by distinguishing between rights granted to the owner exclusively by registration, and those which can exist independently of registration proceedings. This distinction is misleading, as it implies that the dividing line for arbitrable subject-matter is as simple as the distinction between patent rights which must be registered and should thus not be arbitrable, and copyright rights, which can exist independent of registration. This ‘registration’ language is based on the old territorial view of IP rights, and it will be shown that this model no longer corresponds with reality in many countries. Instead, it is suggested that the distinction be based on whether the outcome of the arbitration proceeding has effect inter partes, or erga omnes, that is, effects for third parties that are not privy to the dispute. It is well settled that “[w]here the parties enter into arrangements relating to the development, use, marketing or transfer of IP rights granted, disputes arising from such ‘commercial’ arrangements [can] be arbitrated without any controversy arising from the issue of its arbitrability. Such matters are generally regarded as inter partes commercial matters and are arbitrable.”  Furthermore, in the case of copyright, an arbitrator does not have to decide if title should be revoked, but instead must examine “whether the product or work at issue complies with the prerequisites for protection independently of any registration. In these circumstances the arbitrability is broadly accepted on an international scale.” 
The policy debate arises where in rem decisions are to be made: for example, with validity proceedings, where the effect of the award could potentially be to discontinue the existence or enforceability of the monopoly.  Several arguments have been brought forth against the arbitrability of such disputes. In this section, the types of IP rights that should or should not be arbitrated will be set out, taking into consideration the need for public and publishable outcomes, and the importance of these rights over traditional property rights. The conventional territorial view of IP rights, where the state grant of a monopoly precludes parties from disposing of the rights through arbitration, will be scrutinized. It will be argued that party autonomy should take precedence over this outdated perspective. The competence of arbitrators will also be discussed, in terms of the ability to decide disputes that have far-reaching effects, and it will be concluded that arbitrators are at least equally able as the courts to consider the policy implications of their decisions. Finally, the desirability of allowing alternative remedies will be considered, and it will be concluded that because states are able to ultimately determine whether the agreement should be enforced under their system of law, there should be no objection to allowing disputants to arbitrate IP rights.
1.1 Impact of Territoriality on Arbitrability
In the past, many legal systems did not allow the arbitration of IP disputes, simply because the rights had been granted by a sovereign power. It was argued that the nature of the rights was such that questions as to validity should only be decided by the authority which issued the right. In the case of patents, the rights granted are the result of a bargain between the rights-holder and the government, wherein the inventor is incented to disclose the claimed invention to the public in exchange for a monopoly over making, using and selling the invention for a limited period of time. As the bargain exists between the rights-holder and the government, it was contended that the rights-holder did not have the authority to extinguish or dispose of the right in any manner other than by the same authority that created the right.
The traditional conception of the territoriality of IP rights has changed, and states are becoming more supportive of party autonomy.  “[M]ost patent systems grant the patentee the right to voluntarily surrender, broadly license, or at least refrain from enforcing the patent. The capacity to voluntarily relinquish rights is little different from the capacity to voluntarily allow an arbitrator to decide whether rights should be relinquished.”  Further, the government should not have ultimate authority over the disposal of rights simply because a bargain has been struck with the rights-holder. The bargain exists to encourage public disclosure of information, and once the information has been released, the rights-holder has fulfilled their duty. “The question of the validity of an existing [intellectual property right] is thus the question of whether or not a particular monopoly, granted as an incentive justifiably exists…and the maintenance of the monopoly is related to the expected reward to the [rights holder].”  Whether the monopoly continues to exist after it has been granted is irrelevant to the purposes of ‘promoting innovation, encouraging advancements in technology, and fostering global competitiveness of domestic industries.’  As such, there should be no objections to the arbitrability of IP disputes based only upon the sovereign nature of the grant of rights.
1.2 Alternative Remedies and the Competence of Arbitrators
The scope of remedies that should be available to parties in intellectual property arbitration is a source of controversy. Remedies in a court action for infringement of intellectual property rights generally include injunctions and damages, and can involve confiscation of infringing goods and rectification, or rendering the right unenforceable. In the arbitration context, these, and more creative remedies may be available if the arbitration agreement so specifies. The scope is, however, subject to the lex arbitri, and the law of the right-granting authority, which may limit the allowable remedies based on public policy concerns.  Parties may nonetheless choose to give the arbitrator jurisdiction to award any remedy, but the enforceability of the award would be affected.
Much of the debate around the scope of remedies centers on the competence of arbitrators to decide, both in the sense of jurisdictional competence, which will be discussed below, as well as the ability to consider the case properly. In arbitration, the parties select the decision-maker, often based on qualifications and experience in the relevant area. In turn, this leads to “more predictable, better reasoned, and more credible decisions.”  Although arbitrators may not be equipped to consider the policy perspective of each decision, the value in restricting the scope of remedies available to the parties is limited, and must be considered in light of the state-controlled enforcement mechanisms that exist. “To be enforceable, arbitration awards must…be recorded in court, and made part of a court order. It is therefore ultimately up to a judge, not an arbitrator, to decide on the extent to which, if any, arbitration awards ought to be enforced.”  Under the 1958 New York Convention, to which most states are a party, the enforcement of international arbitration agreements can be denied on the basis of public policy.  As such, the court has final discretion on whether an arbitral agreement and the associated remedies are acceptable, and the remedies should thus not be restricted in advance.
1.3 The Public Interest Debate
Several objections to the arbitrability of IP disputes have been raised on grounds of public interest. These objections generally fall broadly into two categories: the argument that because arbitration is a consensual process, the arbitrator can only bind or affect those that have consented to be bound; and the argument that the confidential nature of arbitration is in conflict with the public’s need for publishable outcomes.
1.3.1 Limited Jurisdiction of the Arbitrator
IP disputes are unique in their potential to affect the freedom of action of third parties. These rights exist to exclude others, and if they are debated or revoked in a closed process, the parties that are not privy to the action will be affected without their consent or input. It has been argued that because the jurisdiction of the arbitrator is limited to the parties that have consented to it, the arbitrator does not have the ability to affect third parties with their decision. There is further concern that if rights are invalidated by arbitration that “[w]hile the accused infringer is certainly adequately motivated to defend itself with a claim of invalidity, it may not be adequately motivated to defend all third parties. This might present a problem where the accused infringer has procedural alternatives that would allow it, contrary to the public interest, to limit the scope of a finding of invalidity.”  However, in all processes, whether public or private, the parties to the dispute will be representing their own interests. The competence of a judge over an arbitrator to distinguish bad-faith representations, and take the public into account when making decisions that may affect others, is debatable. Further, as was previously discussed, IP rights are fully alienable, and the mere fact that the alienation is occurring through an arbitrator as opposed to through the free will of the rights-holder is irrelevant.
In response to concerns about unduly restricting the freedom of third parties, and arguments based on the limited power of the arbitrator, states have several options available to them. “First, the effect of an invalidity award may be expressly defined as inter partes, as has been done in the United States. Alternately, an award…may be given broader effect, either through preclusive effects in later proceedings or through third party enforcement of the award itself. Such an award would eliminate an obstacle to competition and thus confer a benefit on the broader public, creating a basis for preclusive effects or third party enforcement of the award on principles of implied consent.”  If the award is only effective inter partes, the effect on third parties is completely eliminated, and an arbitrator would certainly be within their jurisdiction to decide such a dispute. The remaining policy considerations may inform on whether a state chooses to give awards broader effect than this.
1.3.2 Balancing Confidentiality and the Need for Publishable Outcomes
Confidentiality of the arbitration process is a selling feature for many would-be intellectual property litigants. However, this confidentiality conflicts with the public interest in having the outcome of revocation proceedings be published, and this has been brought forth as an argument against using alternative dispute resolution mechanisms for any type of intellectual property dispute. Even if the effect of the invalidity is only inter partes, the public is not alerted to the possibility that the monopoly should not exist. The public interest in having outcomes published includes commercial considerations particular to IP rights, decreasing the possibility of collusion, drawing attention to inadequacies in the law, and in the case of patents, ensuring that the advancement of science is not impeded. Conditions can however be placed on the availability of information about arbitral awards in order to alleviate some of these concerns. Further, the need to control judicial time and expense, and the traditional benefits of using arbitration including access to justice, may supersede these concerns, especially given the availability of information dissemination mechanisms.
The grant of monopoly rights affects free competition, especially in the case of patents, and the lack of disclosure has been used as an argument against allowing arbitration for validity disputes. If a patent is declared invalid, the public will be able to make, use and sell the invention without a license. If the public is unaware of the invalidity, it will be treated by commercial competitors as if the patent nevertheless was valid. “In response to an issued patent, competitors will concentrate on increased research and development in an effort to conceive a patentable invention that is outside the scope of and does not infringe on any issued patents…[G]rave concerns emerge where ADR of patent disputes leads to a reduced awareness of invalid patents, resulting in decreased efforts in research and development.”  The lack of public awareness may be only a result of the confidentiality of the process, but this problem is compounded by the absence of the same “disclosure and discovery procedures that take place in federal court litigation due to the complex technical disposition of the subject matter.”  “The availability of such pragmatic information to guide future conduct is not facilitated by ADR of patent validity actions.” 
Related to the concern of the commercial fairness of arbitral awards is the theory that if a patent is invalidated without the public’s knowledge, scientific advancement will be unnecessarily impeded. “The outcomes of ADR patent disputes do not endow the public with information that can be improved upon by other inventors.”  However, even if a scientist relies on the fact that an invention is patented, he can nevertheless use the information disclosed in the patent in creating an improved product. If the improved product relies on the invalid patent, the scientist could seek a license from the patentee in order to make commercial use of the product. In such a case, although perhaps commercially unfair, the development of the product is not impeded.
An argument that has been put forth against the arbitrability of intellectual property rights is the possibility of collusion in proceedings that could effectively revoke the right. “[I]f neither of the parties were interested in fully probing the question of validity, they would be able to conceal even strong evidence of invalidity from the broader public. Moreover, since it is difficult and expensive to prove invalidity, the public interest might be best served if any evidence of invalidity were made available to the general public. This may not occur in arbitration, where the parties have little incentive to divulge evidence of invalidity to the outside world, and indeed possible incentives to suppress this evidence.”  The public interest is better served when there can be checks and balances built into the system. For example, in the case of patent litigation, alleged infringers invariably challenge the validity of the patent due to the structure of the legal test for infringement.
An inherent problem in any confidential ADR process is that the public is denied the benefit of learning of inadequacies in the law. “Keeping [validity] proceedings confidential not only denies the public notice and suppresses problematic laws, but also withholds the empirical data that is necessary to evaluate whether ADR is efficacious in resolving…disputes. Unlike litigation, relatively few people know what transpires during an ADR proceeding, and even fewer, if any, are authorized to speak about it.”  However, this problem is not particular to intellectual property disputes; it is a drawback of allowing any dispute to be referred to arbitration, and should be taken into account in the overall balance, but should not be exclusively relied upon to disqualify arbitrability.
All of the above concerns need to be balanced with the public interest in the prompt resolution of disputes, and not allowing financially weaker parties to be taken advantage of. The public is certainly concerned with the proper use of judicial resources and lessening the burden on taxpayers. Further, the availability of arbitration lessens the likelihood of having the threat of litigation used in order to settle for an outcome that would not be judicially ordered.
The public policy concerns of arbitrating intellectual property disputes can be addressed through legislation requiring that some or all of the proceeding be publicly disclosed. The difficulty arises in balancing the interests of the parties in maintaining confidentiality, and the interests of the public as outlined above. The parties may agree that the invalidation will be registered with the applicable authority, but it is unlikely that parties would agree to give arbitrators the authority to decide ultimate validity, and there could be enforcement problems with such an award. Legislation could require that the award of validity or invalidity be registered “in order to alert third parties to the proceedings. The form of the award could be tied to the pleadings in such a way as to force a brief explanation of the issues decided. The accused infringer then would be faced with a choice: it could either arbitrate its invalidity claims with the knowledge that they would become public and may even have preclusive effect, or withhold its invalidity claims and rely on other arguments. This is the same choice an accused infringer would face in litigation, and the outcome should be similar.”  This decision is of course left up to the legislature, and should take into account the policy concerns described above.
2. Arbitrability of IP Rights in Canada
The culture of acceptance of the private justice system in Canada has made arbitration “part of the dispute resolution system the legitimacy of which is fully recognized by the legislative authorities.”  The trend in case law and legislation “has been, for several decades, to accept and even encourage the use of civil and commercial arbitration, particularly in modern western legal systems, both common law and civil law.”  Because there is no legislation in Canada specifically relating to arbitration of intellectual property matters, the arbitrability of such disputes is based on common law principles, and the enforcement mechanisms for arbitral awards, for example, in the 1958 New York Convention. Consistent with the general lenience afforded to parties that choose to arbitrate, there are also no outright restrictions on referring IP disputes to arbitration. However, the limitations that are imposed by case law and legislation, and in particular the Federal Courts Act, operate to disallow arbitration of in rem validity actions that would have the effect of expunging the right altogether. Enforcement of arbitral awards is generally only denied as being contrary to public policy where the award would operate to bind the public, as opposed to only the parties.
2.1 Case Law: Desputeaux v. Editions Chouette
The seminal case in determining the arbitrability of IP disputes in Canada is Desputeaux v. Éditions Chouette. The dispute originated as a claim to the copyright in a cartoon character, but the arbitrability of the dispute became an issue unto itself. The disputants had formed a partnership to create children’s books, and had licensed the use of the character. The correct interpretation of the licensing contract was brought into question, and Éditions Chouette, the text author, brought a motion for the court to recognize its continued entitlement to exploit reproduction rights. However, under s.37 of the Quebec Act respecting the professional status of artists in the visual arts, arts and crafts and literature, and their contracts with promoters, every dispute arising from the interpretation of a contract between an artist and a promoter must be submitted to an arbitrator.  Because the existence and validity of the contract were not in issue, the case was referred to arbitration on this basis. The arbitrator that was appointed by the parties held that Éditions Chouette alone held the reproduction rights.
On motion for annulment of the arbitral award, the Superior Court ruled that none of the grounds of nullity applied, and dismissed the motion.  On appeal from the Superior Court judgment, the Quebec Court of Appeal (QCA) annulled the award on several grounds.  S.37 of the Copyright Act states that “[t]he Federal Court has concurrent jurisdiction with provincial courts to hear and determine all proceedings, other than the prosecution of offences under section 42 and 43, for the enforcement of a provision of this Act or of the civil remedies provided by this Act.”  According to the interpretation of the QCA, this would require all copyright ownership disputes to be heard only by the Federal Court or superior courts, and therefore, arbitration of the dispute would not be allowed. The Court further based their decision on the argument that the arbitrator exceeded the strict interpretation of the contract documents, and assumed a competence that he did not have. Finally, the QCA decided that disputes over matters of “public order” may not be submitted to arbitration pursuant to art. 2639 of the Civil Code of Quebec, and that because moral rights that attach to the author are involved, copyright should not be arbitrated.  Importantly, the Court remarked on the issue of erga omnes decisions made by arbitrators, and said: “In ruling on the question of the monopoly granted by the [Copyright Act] to an author, the arbitrator made a decision that not only had an impact on the right to paternity of the work, but could be set up against persons other than those involved in the dispute submitted for arbitration.” This suggests that the QCA did not allow arbitration of intellectual property disputes at least in part due to the effects that the decision could have on third parties.
In a unanimous decision, the Supreme Court of Canada (SCC) reversed the annulment from the Quebec Court of Appeal. Cite This Essay
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