Research Handbook on Intellectual Property Rights and Arbitration: (Research Handbooks in Intellectual Property series)

The Research Handbook on Intellectual Property Rights and Arbitration explores the complementary relationship between state court adjudication and arbitral proceedings in the context of intellectual property rights. Presenting contemporary research and insight into the scholarly debates on the topic, it provides a comprehensive overview of arbitrating intellectual property disputes on an international scale. Bringing together an array of distinguished academics and professionals from across the globe, the central theme of this Research Handbook is the relationship between intellectual property and arbitration in general. Individual chapters consider such questions as the arbitrability of intellectual property disputes, suitable arbitration bodies, and the protection of trade secrets in arbitral proceedings. Specific fields of intellectual property arbitration such as licensing, copyright and domain name disputes are deftly considered alongside investor-state dispute settlement, whilst national perspectives on intellectual property arbitration are also surveyed. Both incisive and authoritative, this Research Handbook will prove essential for researchers and students who are interested in intellectual property law and dispute resolution. Legal practitioners active in arbitrating intellectual property disputes will similarly benefit from the applied nature of the text.

Table of Contents:
Contents: Preface and acknowledgements xii Introduction to the Research Handbook on Intellectual Property Rights and Arbitration 1 Simon Klopschinski and Mary-Rose McGuire PART I IPRS AND ARBITRATION IN GENERAL 1 Arbitrability of IPRs disputes 7 Antje Baumann 2 Arbitration bodies for arbitration of IPRs disputes – IP arbitration and DIS arbitration rules 27 Jennifer Bryant 3 Arbitration through the Unified Patent Court’s PMAC 44 Peter Georg Picht 4 Mediation of IPR disputes 56 Maximilian Haedicke and Alexandra Kükenh.hner 5 Mediation of IP disputes 70 Peter Tochtermann 6 Arbitration – the chamber of secrets? An analysis of procedural rules and technical tools for the protection of trade secrets in arbitration 81 Marko Andjic 7 Recognition of state court decisions arising from IPR disputes by arbitral tribunals under the Brussels Ia-Regulation 101 Stephan Klebes PART II SPECIFIC FIELDS OF IPRS ARBITRATION 8 Arbitration v. litigation in disputes related to licensing agreements 118 Mary-Rose McGuire 9 Arbitration in SEP/FRAND disputes 138 Peter Georg Picht 10 Efficient arbitration agreements in the context of patent pools – consideration of rules on multi-party arbitration in licensing disputes 160 Lea Tochtermann 11 Copyright arbitration in the Brazilian media market 183 Cláudio Lins de Vasconcelos 12 Domain name arbitration 200 Christopher S. Gibson 13 The protection of intellectual property rights through WTO dispute settlement 231 James Mendenhall and Eric M. Solovy 14 International investment arbitration as an alternative venue for litigating intellectual property disputes: The example of beIN Corporation v Saudi Arabia 255 Simon Klopschinski PART III NATIONAL PERSPECTIVES ON IPRS ARBITRATION 15 Resolution of IPR disputes in Australia 274 Jey Nandacumaran, Rachelle Downie, Colette Downie and Grant Fisher 16 Arbitration of intellectual property rights disputes in Austria 315 Alexander Zojer 17 Intellectual property rights arbitration in Brazil 331 Viviane Kunisawa 18 Arbitration of IP disputes in China 347 Douglas Clark 19 Arbitration of IPRs in England & Wales 366 Alex Wilson, Tom Oliver and Alex Borthwick 20 Arbitration and intellectual property in French law 382 Camille Pecnard and Antoine Jarlot 21 Patent disputes in Germany: arbitration vs litigation 402 Simon Klopschinski 22 IPRs arbitration in Indonesia and South-East Asia 419 Sih Yuliana Wahyuningtyas and Davin Giovannus 23 IPRs arbitration in Italy: potential benefits and future challenges 440 Gianluca Massimei and Pierluigi Dodaro 24 IPRs Arbitration in Japan 459 Nobuto Shirane 25 IP arbitration in Korea 463 Hyungkeun Lee and Cyril Chan 26 IPRs arbitration in Mexico 475 27 IPRs arbitration in the Netherlands 494 Michiel Rijsdisek 28 IPRs arbitration in Poland, Hungary and the Czech Republic 504 Michał Stępień 29 IP and arbitration in Russia 533 Burkhard Breig and Alexander Muranov 30 IPRs arbitration in Switzerland 547 Michael Ritscher, Simon Holzer, Christian Fischer and Andrea Schäffler 31 IPRs arbitration in the US 554 Roger J. Chin, Michael A. Morin and Reba L. Rabenstein

About the Author :
Edited by Simon Klopschinski, Partner, rospatt Intellectual Property Lawyers, Düsseldorf and Mary-Rose McGuire, Professor for IP-law and Civil Procedure, European Legal Studies Institute, University of Osnabrück, Germany

Review :
‘The Research Handbook on Intellectual Property Rights and Arbitration is a high-quality and thought-provoking source that offers original insights into the growing role of arbitration in IP dispute resolution. It will stand as a useful resource for scholars, practitioners, and policymakers navigating the com­plexities of this dynamic legal domain.’ ‘The Research Handbook on Intellectual Property Rights and Arbitration, compiled and edited by Simon Klopschinski and Mary-Rose McGuire, is, as promised, an effective and comprehensive introduction for a researcher or practitioner considering the trend towards alternative dispute resolution for IP rights (IPR). Klopschinski (Partner at Rospatt Intellectual Property Lawyers) and McGuire (Professor for IP-law and Civil Procedure at the University of Osnabrück) make a formidable team, combining a crucial understanding of practitioner concerns with a critical engagement in research.’ ‘Klopschinski and McGuire succeeded in creating a high-quality handbook with practical information for avid practitioners. All of its chapters are diligently researched and meet highest academic standards.’ ‘This comprehensive and rigorous analysis will help to deepen the understanding of IP and investment law. It is a must-read for legal scholars, practitioners and anyone seeking a profound understanding of this intersection between two important fields of international law.’ ‘This book constitutes an excellent resource for exploring the numerous practical and dogmatic facets of IP arbitration which is very timely in view of the growing role of arbitration in the global IP dispute resolution ecosystem.’ ‘Intellectual property rights relate to intangible, often technology linked subjects, generate erga omnes effects, and are territorially limited despite their ubiquity, and in the case of patents, trademarks and designs, are the result of official actions. Resolving intellectual property rights disputes in courts is challenging particularly when issues of applicable law and jurisdiction are at stake. This Research Handbook is a true treasure trove of reliable advice and information on how to master those challenges by choosing arbitration as an attractive and efficient alternative.’