The particularities – and complexities – of arbitration in the field of Intellectual property was the topic on which, this Tuesday, 12, the lawyers Nathalia Mazzonetto, Karin Klempp Franco and Rafael Atab, participants of the webinar on “Arbitrability of disputes involving industrial property rights”. Moderated by the president of the CSD-ABPI (Center for Dispute Resolution, Mediation and Arbitration in Intellectual Property, of the ABPI – Brazilian Association of Intellectual Property), Manoel J. Pereira dos Santos, the event is the first of a cycle of four webinars organized for this year by the CSD-ABPI Arbitration Chamber. The next ones will deal with urgent relief in arbitration, arbitrability involving copyright and third-party intervention in arbitration.
In her presentation, Nathalia Mazzonetto highlighted some aspects that must be taken into account when choosing arbitration in conflict resolution, such as confidentiality, speed, costs and even the composition of the arbitral tribunal. She also raised issues that directly impact intellectual property rights, among others, 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 order issues to be considered,” he said. 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, she highlighted the issue of the INPI’s participation. “Arbitration is not a means of solving every type of conflict, everything must be considered when choosing this option”, he said.
The caution to be adopted 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 take into account that contracts are often part of a chain permeated by cross licenses or other rights involved, such as software, for example. Therefore, he recommends, it is good that the same contractual clause takes arbitration into account as a resolution of the conflict as a whole. “We cannot forget that removing the Judiciary is a path of no return”, he 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 will I choose? How much does it cost? What types of disputes will arise from this contract? Is the cost-benefit worth it?”, he asked.
In his analysis, from the perspective of comparative law, Rafael Atab emphasized that a dispute to resolve conflicts in a transactional scope can be more complex, starting with the different legal systems of the countries. “We have to define, among others, what will be the seat of that arbitration and the applicable law eventually for each of the issues that are being decided”, he said, adding that in the various angles of analysis of arbitrability, the question of the validity of rights. For comparison purposes, Atab 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 more open ones, like the United States and 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 subject is nullity of rights.