“Research Handbook on Intellectual Property Rights and Arbitration”

For our readers who are less familiar with this branch of law, arbitration (unlike the “standard” litigation in front of public courts) is a private dispute resolution process where parties appoint an arbitrator to make a binding decision. Mediation (also covered by the book), in turn, involves a mediator who shall facilitate communication between parties to help them reach their own mutually agreeable solution.

Now off to the book’s pages!

Part I “IPRs and Arbitration in General”

Part I introduces the reader into the general aspects of IP and arbitration, including the issues of arbitrability, differences between arbitration and mediation, as well as existing arbitration bodies. In this Part, three chapters seemed especially relevant to this Kat.

Chapter 3, authored by Peter Georg Picht, discusses the possibilities for arbitration, offered by the Patent Mediation and Arbitration Centre (PMAC), established as part of the Unitary Patent’s system. Picht argues that the PMAC should have broad competence, encompassing not merely Unitary Patent-related disputes, but also those with “external” elements such as a contract under non-EU law or a dispute also involving trade secrets. If such approach is confirmed, the PMAC will have even greater relevance for stakeholders (who may rely on Picht’s piece to properly understand the PMAC’s administrative setup and procedural arrangements).

Chapters 4 and 5 are dedicated to mediation of IP disputes. In Chapter 4, Maximilian Haedicke and Alexandra Kükenhöhner review EU acquis on mediation, as well as opportunities and challenges offered by mediation. For Haedicke and Kükenhöhner, IP conflicts suitable for mediation include multinational disputes, disputes requiring confidentiality, disputes where the relationship requires future cooperation, as well as emotionally charged conflicts.

Peter Tochtermann then follows, in Chapter 5, with his perspective on IP mediation in Germany. For Tochtermann, mediation is also taking prominence in disputes concerning standard essential patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licensing. Tochtermann reviews two possible routes for such disputes: court-annexed mediation (where a judge specialised in patent law acts as mediator) and private mediation. While many mediations are not public, private mediation seems to be the preferred method for patent disputes in Germany.

Part II “Specific fields of IPR Arbitration”

If this Kat had to select her favourite chapter of the entire book, it would probably be Chapter 9, also by Peter George Picht, this time on arbitration in SEP/FRAND disputes (an area, where, it seems from the contributions to the book, arbitration is most active). Notably, Picht considers whether arbitration in SEP/FRAND disputes should be mandatory, ultimately suggesting mandatory arbitration with non-binding results as the most optimal solution.

To complement the perspectives on arbitration, Chapters 13 and 14 address, respectively, the enforcement of IP rights through trade agreements and through international investment agreements (IIA).

Simon Klopschinski, one of the book’s editors, develops the Saudi Arabia case further in Chapter 14. Using it as a guiding thread, Klopschinski discusses three possible routes for IP litigation (all followed by the rightholders to the sports broadcasts, beIN Corporation): enforcement in front of domestic courts, WTO state-to-state dispute settlement, and investor-state dispute settlement.

Part III “National Perspectives on IPRs Arbitration”

Part III of the book, written by the practitioners and for the practitioners, discusses an array of national perspectives on IP arbitration. This part covers leading jurisdictions in Europe, Asia and America. Each chapter focuses on arbitration-related provisions from national legislation and case law on issues such as arbitrability of IP disputes –the main question here being whether disputes on validity of IP rights can be subject to arbitration–, procedural norms, enforcement of arbitration award. Several chapters also include an overview of the national litigation systems that this Kat found useful. When discussing patent litigation and arbitration in Germany, Simon Klopschinski concludes: jurisdictions with a strong court system (such as Germany) are less prone to have disputes resolved by arbitration. Yet, several other jurisdictions covered in the book report having little to no arbitration cases, which should have probably warranted their exclusion from Part III.

While the book offers a comprehensive exploration of IP and arbitration, its considerable length of nearly 600 pages may challenge some readers. The authors’ thorough approach, though commendable, occasionally leads to redundancy: a more concise treatment, with a focus on arbitration-intensive areas and jurisdictions might have enhanced its accessibility.