The Future of Intellectual Property Arbitration?—A Case Study on IP Arbitration: the Portuguese System for Settlement of Disputes Derived from Industrial Property Rights Where Reference Medicines and Generic Medicines are in Question
Circulated at: the 2015 UNCITRAL Emergence Conference, Harmonizing Trade Law to Enable Private Sector Development, University of Macau, 30 November 2015.
Abstract: Having observed the trend towards harmonization on intellectual property laws, the trend towards harmonization of arbitration laws and a general trend in favor of arbitrability, a natural question to ask is whether there is also a trend of harmonization on the issue of arbitrability in the realm of intellectual property.
In Portugal, as in many jurisdictions, the access to the reference medicines and generic medicines market gives rise to many disputes between pharmaceutical companies wishing to enter into the market and the owners of intellectual property rights. The Portuguese authorities established a unique dispute resolution system specifically designed for this particular type of industrial property disputes. The so-called “system for settlement of disputes derived from industrial property rights where reference medicines and generic medicines are in question” (law no. 62/2011 of 12th December 2011) consists in a compulsory arbitration.
The nature and the features of the new Portuguese dispute resolution system have already raised several serious matters, such as the arbitrability of the issue related to the validity of the concerned patent, the confidentiality of the arbitral proceedings and the arbitral award, the level of expertise of the arbitrators, as well as their independence and impartiality. This system constitutes a unique and original case study in the field of arbitration of intellectual property disputes.
This paper offers an overview of the classification of policies regarding arbitration of patent disputes. It further analyzes the Portuguese dispute resolution system, and explores the possibilities of its exportation in other jurisdictions.
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“Using Online Educational Technologies in Legal Studies: the Combination of Quizzes and Wikis”
Presented at: Blended Learning Symposium: Teaching Beyond the Classroom — The Hong Kong Polytechnic University, Hong Kong, 19 August 2015.
Abstract: This presentation is based on a case study conducted for the purpose of obtaining the Certificate in Becoming an Online Teacher (Educational Development Center, The Hong Kong Polytechnic University). It aims to show how the legal methodology called “IRAC’ fits in the Bloom’s taxonomy, and to demonstrate the efficiency of online educational technologies (quizzes and wikis) in a blended learning environment designed for legal studies.
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“Arbitration of Intellectual Property Disputes from the Parties’ Perspective”
Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong Kong Trade Development Council, and Hong Kong Design Centre — Hong Kong, 5 December 2014.
Abstract: The 21st century is “the century of knowledge”. Intellectual property is essential to address global challenges. The process of internationalization dramatically gained importance since 1995 when IP was integrated into the WTO legal framework. This resulted in the harmonization of IP laws worldwide. Given this new global economic model, statistics show an increasing number of IP registrations and an increasing number of international contracts involving IP rights; and as a consequence, an increasing number of IP disputes.
In the meantime, international arbitration is considered the preferred means to resolve international commercial disputes. In the context of globalization, there is a strong movement towards the harmonization of arbitration laws and practice across national boundaries. One precondition for arbitration is that the disputes submitted to the arbitrator are capable to be settled by arbitration — the issue of “arbitrability”. Most jurisdictions have now inclined to take a liberal approach to define the scope of arbitrability broadly. Some commentators described this phenomenon as “the decline of inarbitrability” or even “the death of inarbitrability”.
Having observed the trend towards harmonization on IP laws, the trend towards harmonization of arbitration laws and a general trend in favor of arbitrability, a natural question to ask is whether there is also a trend of harmonization on the question of arbitrability in the realm of IP. This question is of significant practical importance, as arbitration has comparative advantages towards litigation as a forum to resolve IP disputes, given the availability of expertise, the protection of confidentiality, the neutrality of the forum, the flexibility of remedy and the global enforceability of arbitral awards.
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“New gTLDs and Public Order”
Presented at: Domain Names and DNS: Comparative Studies, Institutional Perspectives, Recent Developments in the DNS Governance, CUHK/CFRED Conference — Hong Kong, 14 May 2014.
Abstract: Since the inception of the Internet Corporation for Assigned Names and Numbers in 1998, the landscape and the law of the domain name system (DNS) is constantly changing. The issue of public order is playing an increasing role. This presentation focuses especially on the various dispute resolution mechanisms provided to address public order issues due to the liberalization of the top level domains. This presentation focus more particularly on the new gTLDs related to the health sector, such as .doctor, .health, .hospital, .med, .pharmacy.
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“Rethinking the Domain Name Dispute Resolution in the Era of New gTLDs”
Presented at: Rethinking Domain Name Dispute Resolution in the Era of New gTLDs, ADNDRC conference, Kuala Lumpur Regional Center for Arbitration (KLRCA) — Kuala Lumpur, 18 January 2014.
Abstract: Fifteen years after the UDRP was adopted, there has been an unprecedented increase of domain names resources. ICANN is in the process of liberalizing the creation of new top-level domains. Furthermore, new technologies now allow the registration of internationalized domain names (IDNs). Resources will soon be almost endless and extremely varied (new TLDs + IDNs + IPV6). At the same time, one can question the effectiveness of the UDRP in achieving its goal: fighting cybersquatting. Indeed, in 70% of WIPO cases, disputed domain names are transferred to the claimant. An analysis of the UDRP case law and similar rules shows that the whole system has already evolved, thanks to the UDRP panelists (consolidation, re-filing, etc.) and the ccTLDs registries (mediation, appeal, reimbursement of legal fees, arbitration, etc.). However, good ideas are scattered like pieces of a puzzle. The whole system could be improved by i) giving Lady Justice the sword she is missing in domain names dispute resolution proceedings and ii) gathering all the good ideas together.
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“Intellectual Property Strategy for Cultural and Creative Industries”
Abstract: this seminar aimed: i) at introducing the various types of intellectual property and ii) how to take advantage and value intellectual property rights in the cultural and creative industries.
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“Intellectual Property Marketplaces for Culture and Creative Industries”
Presented at: the BIP Asia Forum 2014, Hong Kong, jointly organized by the HKSAR Government, Hong Kong Trade Development Council and Hong Kong Design Centre Hong Kong — Hong Kong, 6 December 2013.
Abstract: An intellectual property marketplace is a B2B or B2C venue where IPRs owners and IPRs buyers can meet each other and establish transfer agreements, license agreements or even partnership agreements. A large number of IP marketplaces have emerged in the 2010’s. These new players invite us to analyze their various business models and their role as intermediaries. In this context, actors of the creative and cultural industries need to have a better knowledge of their intellectual property rights, which is essential to understand the business opportunities but also to manage the risks associated with online activities.
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“Fighting Counterfeiting: A Comparative Study on the Legal Means to Fight Counterfeiting under European Law, Chinese law and Hong Kong Law”
Presented at: the Hong Kong Baptist University (18 October 2013) and Chinese University of Hong Kong (1st November 2013) — Conferences jointly organized by the European Union Academic Programme (EUAP) and respective University.
Abstract: Counterfeiting is a global phenomenon. It would be mistaken to believe that comparative studies related to counterfeiting could ignore Chinese law, China being the main source of counterfeit goods, as well as Hong Kong law (a large part of counterfeit goods transit through Hong Kong), and EU law (final destination of the goods).
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“Google AdWords and Trademark Rights: the European and Hong Kong Approaches”
Presented at: the Hong Kong Baptist University — Conference jointly organized by the European Union Academic Programme (EUAP) and the Hong Kong Baptist University — Hong Kong, 7 November 2013.
Abstract: A significant number of disputes arose in relation to the use of the Google AdWords service. They captured the attention of many scholars, occupied judges from several jurisdictions, while Google, trademarks owners and users of the service were holding their breath… This seminar aims at analyzing the current legal situation under European law and Hong Kong law.
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“Fighting Counterfeiting: A Compilation of Previous Anti-Counterfeiting Campaigns”
Presented at: the Hong Kong Baptist University — Warm-up Seminar “Protecting Creativity & Innovation: IPR for Products, Brands & Services”, jointly organized by the European Union Academic Programme (EUAP) and the Hong Kong Baptist University — Hong Kong, 18 September 2013.
Abstract: This presentation was first played on the 18th September 2013 at the seminar “Protecting Creativity & Innovation: IPR for Products, Brands & Services”. This seminar took place at Baptist University of Hong Kong and was the launching event of the Creativity Students Competition 2013, organized and supported jointly by the European Union Academic Programme Hong Kong (EUAP) and the European Chamber of Commerce in Hong Kong. Entrants were invited to create a mascot, a poster, and/or a short film and were urged to be as creative as they can with the theme of intellectual property, protection for creativity and innovation. This presentation is a compilation of previous anti-counterfeiting campaigns and serves as an example for an educational purpose.
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“Hong Kong — European Union Cooperation in Protecting and Developing Intellectual Property and Brands: Current Situation and Future Trends”
At: the Hong Kong Baptist University — Conference jointly organized by the European Union Academic Programme (EUAP) and the Hong Kong Baptist University — Hong Kong, 2 September 2013.
Abstract: The conference focuses on the current state and future of intellectual property rights protection and enforcement in Europe and Hong Kong. It seeks to enhance effectively the collaborative working relationships between IP/brand owners, law enforcement officials, IP Departments, investigators and industry organizations in the two regions. It will feature interactive panel discussions and presentations to provide participants an opportunity to obtain insights from the participating experts on recent intellectual property rights protection and enforcement successes and challenges as well as an outlook on future IP trends in the region.
Acting as a moderator of a panel composed by Mr. Peter Cheung (Director, Hong Kong Intellectual Property Department), Mr Mayank Vaid (Chairman of the European Brands Protection Council and Intellectual Property Director, Asia Pacific, Louis Vuitton Malletier, LVMH Fashion Group Pacific Limited), and Mr Matthew Laight (Partner, Bird & Bird, Beijing).
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“Arbitrability of Intellectual Property Disputes: A Comparative Study”
Presented at: International Conference on Access to Non-Judicial Justice, City University of Hong Kong — Hong Kong, 28 October 2011.
Abstract: Over the past decade, the economy and the law of intellectual property has grown considerably under the influence, including the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) entered into force in 1995: the growth records of patents, trademarks, designs, and models is clear, assignments and licenses are increasing and a portfolio of IPR can motivate mergers and acquisitions. There is no doubt nowadays that the intellectual property rights are key strategic assets. In this context, intellectual property disputes are increasing and becoming more complex. Expensive and lengthy litigation, as well as the desire for confidentiality, drives businessmen to search for alternative ways to resolve the disputes and protect their intellectual property rights more effectively.
Arbitration has thus become a preferred method to settle intellectual property disputes. This method of settling disputes has grown substantially in most of the developed countries, particularly since the creation of the Center for Arbitration and Mediation of the World Intellectual Property Organization in 1994. Today, this center has opened an office in Singapore and other new regional centers have been created (i.e. the Japan Intellectual Property Arbitration Center or the Arab Intellectual Property Arbitration Center). The Hong Kong Arbitration Center has even adopted a very specific Semiconductor Intellectual Property Arbitration Procedure.
Now the question to ask is whether intellectual property disputes can be submitted to arbitration. No international consensus has been reached on this issue, due to the different perceptions on whether intellectual property issues fall into the public order in various jurisdictions. The paper intends to discuss the arbitrability of intellectual property disputes on a comparative basis, comparing the law and practice on this issue in certain European countries (i.e. French law, Belgian law, and Swiss law) and that certain Asian countries (i.e. Chinese law and Japanese law). From there, we will see whether the conception of arbitrability in developed countries may be exported to developing countries.
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