Professor Sir Robin Jacob joins expert panel to discuss arbitration of IP disputes

On 17 October 2022, Professor Sir Robin Jacob, Sir Hugh Laddie Professor of Intellectual Property Law at UCL Laws, was invited to speak at the Global Series 2022 event, jointly organised by the US Federal Circuit Bar Association and the European Patent Lawyers Association (‘EPLAW’) in Amsterdam. As the name suggests, the Global Series conference addresses topics of global significance, bring together government representatives, adjudicators, academics, and practitioners in the global legal community to respond, in real time, to emerging challenges.

Professor Jacob was one of an expert panel which discussed the use of arbitration to resolve intellectual property (IP) disputes. Many IP disputes are international in nature, involving broadly equivalent rights in different jurisdictions and parties from multiple jurisdictions, but potentially resulting in inconsistent national decisions. International arbitration is becoming an increasingly common alternative to conventional litigation, since it offers the possibility of consolidation of multiple, parallel IP proceedings in a single forum, and offers the potential of greater speed, flexibility and efficiency of proceedings. Typically arbitration proceedings and awards are kept confidential, which can be appealing to the parties. Conversely, as IP rights are granted by individual states, and different national legal systems treat the issues of arbitrability differently.

Professor Jacob described the pros and cons of arbitration of IP disputes. He particularly discussed the utility of arbitration of disputes about royalty rates for Standard Essential patents (SEPs) and the problems in getting parties to arbitrate these dispute rather than engage in multi-jurisdictional litigation and forum shopping.

He was joined on the panel by Heike Wollgast, Head of IP Disputes Section at the World Intellectual Property Organization, Clemens‐August Heusch, Vice President of Nokia Corporation and Kay Kasper, partner at Hoyng Rokh Monegier.

The Federal Circuit Bar Association was established to unite the different groups who practice within the legal community of the US Federal Circuit, and offers a forum for dialogue between bar and court. EPLAW is an assortation of European IP practitioners and assists with training European judges and promoting a harmonised approach to the interpretation of European patent law in national patent courts and in the UPC.