ARBITRATING INTELLECTUAL PROPERTY DISPUTES AND WHAT TO CONSIDER WHEN DRAFTING ARBITRATION CLAUSES INVOLVING INTELLECTUAL PROPERTY RIGHTS
Doubts have traditionally been raised as to the arbitrability, i.e., whether the subject matter may be resolved by arbitration, of intellectual property disputes. As certain types of intellectual property rights (IPRs) are granted by governments, such as patents and trademarks, some argue that disputes involving IPRs should be decided by the relevant governmental authorities. However, more and more jurisdictions, including Hong Kong, have now recognised that IP disputes are capable of being resolved by arbitration.
In 2017, the Arbitration (Amendment) Bill 2016 was passed in Hong Kong and the Arbitration (Amendment) Ordinance 2017 (the Amendment Ordinance) was published in the Gazette. On 1 January 2018, the Amendment Ordinance came into operation, applicable to arbitrations commenced on or after 1 January 2018 or to arbitrations commenced prior to this date if the parties agree that the Amendment Ordinance applies to their arbitrations. The Amendment Ordinance clarifies, among other things, the issue of arbitrability of IP disputes in Hong Kong, which is considered a crucial development.
Against this background, this article discusses the key amendments introduced by the Amendment Ordinance in respect of IPRs and the implications thereof on IP transactions, particularly in relation to drafting arbitration clauses for contracts involving IPRs.
Oct-Dec 2018 issue