13

Parties have been turning to international arbitration in increasing numbers

to resolve cross-border intellectual property (IP) disputes.

While difficult to quantify (in light of

confidentiality), several sources suggest that this

trend is picking up steam. For example, the World

Intellectual Property Organization (WIPO)

Arbitration and Mediation Center - which tailors

its services to IP-related disputes - has reported a

doubling in the number of cases year on year.

Given the increasing importance of emerging

technologies in the global marketplace, we expect

this trend to accelerate going forward.

Companies with substantial cross-border IP exposure

are turning to international arbitration for a number

of reasons. Arbitration offers a flexible procedure

suited to the unique subject matter, specialised

arbitrators in a neutral (international) forum

and confidentiality protections. Most importantly,

however, international arbitration is usually better

suited than domestic courts for obtaining finality

and avoiding the pitfalls of multijurisdictional

litigation. These features provide substantial

advantages for companies that rely heavily on

IP rights for their business model and operate

on a global scale.

We anticipate further growth in two particular areas:

first, we expect an increase in the use of arbitration

to determine fair, reasonable and non-discriminatory

(FRAND) compensation for the use of standard

essential patents (SEPs) in the technology space.

SEPs are patents protecting a technology that is

necessary for implementing an industry standard

(eg the technology that allows mobile phones made by

different companies to connect to available wireless

networks). Standard setting organisations, which

oversee the development of industry standards, have

been promoting arbitration to resolve FRAND

disputes. In 2017, we saw significant arbitration

awards in this area. For example, Nokia reportedly

achieved major victories in International Chamber

of Commerce (ICC) arbitrations against LG (in

September 2017) and Blackberry (in November 2017).

Intellectual property arbitration:

an emerging trend

Boris Kasolowsky

Partner

T +49 69 27 30 87 47

E boris.kasolowsky@freshfields.com

Robert Whitener

Principal Associate

T +49 69 27 30 82 35

E robert.whitener@freshfields.com

5