Journal of Arbitration Studies (한국중재학회지:중재연구)

The Korean Association of Arbitration Studies (한국중재학회)
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The Procedural Benefits of Arbitrating Patent Disputes

  • Kim, Kap-You (Kevin) (Bae, Kim & Lee LLC's international arbitration and litigation practice group) ;
  • Khalil, Umaer (International Arbitration and Litigation Practice at Bae, Kim & Lee LLC)
  • Received : 2016.08.10
  • Accepted : 2016.08.30
  • Published : 2016.09.01
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Abstract

This paper considers how various types of patent disputes can be more efficiently resolved through arbitration, rather than litigation. For this analysis, it takes three types of patent disputes as a control sample - contractual disputes, infringement disputes and FRAND disputes - and assess how these disputes can be better resolved through arbitration in terms of several criteria, namely, the suitability of the decision-makers, the number of forums in which disputes have to separately decided and enforced, procedural flexibility and confidentiality. The paper takes into consideration that certain types of patent disputes, such as infringement disputes and FRAND disputes are unlikely to be subject to pre-existing arbitration agreements. In these types of disputes, parties may make the decision between arbitration and litigation based on strategic and tactical concerns, rather than legal ones. The paper concludes that, given this limitation, it is not possible to categorically state whether arbitration is more suitable than litigation for resolving patent disputes. The most sensible course to follow in adopting arbitration for patent disputes is for legal advisors to be familiar with the intricate benefits and pitfalls of arbitration in patent disputes, and to actively consider referring a dispute to arbitration over litigation after a dispute has arisen.

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References

  1. Ju-Yeon Lee, Identifying Effective Dispute Resolution Mechanism for Intellectual Property Disputes in the International Context, Journal of Arbitration Studies, Volume 35, No. 3, Korea Association of Arbitration Studies, 2015, pp. 154 to 184.
  2. Damein Geradin, The Meaing of "Fair and Reasonable" in the Context of Third Party Determination of FRAND Terms, George Mason Law Review, Volume 21, No. 3, 2014, pp. 919 to 956.
  3. Jorge L. Contreras and David L. Newman, Developing a Framework for Arbitrating Standards-Essential Patent Disputes, Journal of Dispute Resolution, Volume 2014, No. 1, pp. 23-50.
  4. Christopher Boog and James Menz, Arbitrating IP Disputes: the 2014 WIPO Arbitration Rules, Journal of Arbitration Studies, Volume 24, No. 3, pp. 105-124.
  5. Joseph P. Zammit and Jamie Hu, Arbitrating International Intellectual Property Disputes, Mealey's International Arbitration Reports, Vol. 24, No. 6, 2009, 330.
  6. Gyooho Lee, Keon-Hyung Ahn & Jacques de Werra, Euro-Korean Perspectives on the Use of Arbitration and ADR Mechanisms for Solving Intellectual Property Disputes, Arbitration International, Volume 30, No. 1, 2014, p. 91-123. https://doi.org/10.1093/arbitration/30.1.91
  7. Korean Supreme Court Decision No. 2010Da95390, 19 January 2012.
  8. Korean Supreme Court Decision No. 2010Da63133, 15 March 2012.
  9. Pierre Larouche, Jorge Padilla, and Richard Taffet, Settling FRAND Disputes: Is Mandatory Arbitration a Reasonable and Non-Discriminatory Alternative? HOOVER IP Working Paper Series No. 13003; Tilburg Law School Research Paper No. 023/2013, 2013, at pp. 1-2.
  10. Matthew A. Smith, Marina Couste, Temogen Hield, Richard Jarvis, Mrinalini Kochupillai, Barry Leon, Jacobus C. Rasser, Masamitsu Sakamoto, Andy Shaughnessy, Jonathan Branch, Arbitration of Patent Infringement and Validity Issues Worldwide, Harvard Journal of Law & Technology, Volume 19, No. 2, 2006, pp. 299-357.