Page 0014

14

We anticipate many more such disputes in the future,

in particular as the number of SEPs is expected to

grow exponentially with the Internet of Things.

Next, companies are increasingly resorting to

arbitration to protect their investments in IP rights

under international investment agreements (IIAs).

Legal developments in 2017 indicate an increasing

openness to claims against states for allegedly

harming IP rights. For instance, the tribunal in

Bridgestone v Panama ruled that an exploited

trademark constituted a protected investment.

Additionally, while the tribunal in Eli Lilly v Canada

dismissed the company's claims on the facts, it did

not reject - and appeared willing to consider - the

legal argument that an investor may rely on a host

state's international commitments (such as under

the Trade-Related Aspects of Intellectual Property

Rights (TRIPS) Agreement) to support the investor's

legitimate expectations in respect to the treatment

of its IP rights. As companies learn the benefits

of IIAs for protecting their IP rights against state

interference, we expect such claims to become

more common.

So what should businesses with significant IP

exposure (such as pharmaceutical and tech

companies) have in mind for 2018? First, they should

consider the potential advantages of international

arbitration for current and future cross-border IP

disputes. Arbitration is normally agreed up front

(usually in a larger contract), but it can also be

agreed after the dispute arises - which often

happens in FRAND cases. Next, companies should

make themselves aware of the protections afforded

for IP rights under international investment treaties,

and the possibility of bringing arbitration claims

against states that interfere with those rights.

For further reading, our Frankfurt-based arbitration

lawyers Boris Kasolowsky and Robert Whitener,

together with IP litigator Wolrad Prinz zu Waldeck

und Pyrmont, have recently published the guide

International Arbitration of Intellectual Property Disputes

(CH Beck-Hart-Nomos 2017).

' Across a number of jurisdictions,

we see clients increasingly

considering the advantages

of arbitration as an alternative,

efficient and confidential

means of resolving IP disputes -

especially in the technology

and pharmaceutical sectors.'

Wolrad Prinz zu Waldeck und Pyrmont,

Partner, Intellectual Property Dispute Resolution

Intellectual property arbitration:

an emerging trend

5

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