Newsletter Edition 35 - April 2022


Impacts of arbitrability on intellectual property rights

The topic addressed by lawyers Nathalia Mazzonetto, Karin Klempp Franco, and Rafael Atab in the webinar “Arbitrability of disputes involving Industrial Property rights”, held on April 12th, was the particularities — and complexities — of arbitration in the context of intellectual property. Moderated by the president of the CSD-ABPI (ABPI’s Center for Dispute Resolution, Mediation, and Arbitration), Manoel J. Pereira dos Santos, the event was the first of a cycle of four webinars organized for this year by the CSD-ABPI Arbitration Chamber. The upcoming events will deal with “emergency protection in arbitration”, “arbitrability involving copyright” and “third-party intervention in arbitration”.

In her presentation, Nathalia Mazzonetto highlighted some aspects that must be considered when choosing arbitration in conflict resolution, such as confidentiality, speed, costs, and the composition of the arbitral tribunal. She also raised factors that directly impact intellectual property rights, such as disputes relating to property rights, provided for in objective arbitrability – which establishes which matters can be resolved by arbitration. “In this case, there are public policy issues to consider”, she stated. When dealing with subjective arbitrability – which corresponds to the need for the parties to be able to submit to arbitration within the scope of Intellectual property, Mazzonetto highlighted the issue of the BPTO’s participation. “Arbitration is not a means of resolving every type of conflict since everything must be considered when choosing this option”, she said.

The caution to be taken in the decision to resort to arbitration as a means of conflict resolution is also shared by Karin Klempp, especially when it comes to contracts. According to her, it is necessary to consider that contracts are often part of a chain permeated by cross-licenses or other rights involved, such as those related to software, for example. Therefore, she recommends that it is good that the same contractual clause considers arbitration as a resolution of the conflict. “We cannot forget that removing the Judiciary is a path of no return”, she added, remembering that arbitration as a private form of conflict resolution comes with burdens and bonuses. “Is this a suitable dispute for this contract? Which chamber do I choose? How much does it cost? What types of disputes will arise from this contract? Is the cost-effectiveness worth it?” she asked.

From the comparative law perspective, Rafael Atab emphasized that a dispute to resolve conflicts in a transactional scope can be more complex, starting with the different legal systems of countries. “We have to define, among other things, what will be the seat of that arbitration and the eventually applicable law for each of the issues that are being decided”, he said. Atab also added that, in the various angles of analysis of arbitrability, the question of the validity of rights is of great importance. For comparison, he listed four sets of countries: those that deny the possibility of arbitrating IP-related issues and particularly rights where there is a state grant, as is the case in South Africa; the most open, such as the United States, Belgium, and Switzerland, where even the question of validity is perfectly arbitrable; those that accept arbitrability with restrictions, but that somehow limit the effects of recognition or not of validity; and, finally, countries that have not yet clearly positioned themselves as to the precise interpretation of the spectrum of objective arbitrability, when the issue concerns nullity of rights.

To watch the webinar, access the ABPI YouTube Channel by clicking here.