Arbitrability of Intellectual Property Disputes

(Term paper towards partial fulfilment of the assessment in the subject of Intellectual
Property Dispute Resolution)

Submitted by: Submitted to:

Sarah Hasan Usmani(1234) Ms. Kanika Dhingra

Faculty of Law

NATIONAL LAW UNIVERSITY, JODHPUR

SUMMER SESSION (JANUARY-MAY, 2019)

Table of Content
Acknowledgment.......................................................................................................................2

Introduction................................................................................................................................3

What is Arbitration?...................................................................................................................4

Relation Between Arbitration And IPR.....................................................................................5

Why arbitration is used as a mechanism to solve the dispute in Intellectual Property Rights
Conflicts?...................................................................................................................................6

Can intellectual property disputes be arbitrated in India?..........................................................7

Attitude towards arbitration...................................................................................................7

Arbitrability in India – principles established........................................................................8

Ouster based on right in rem..................................................................................................9

Intellectual property arbitration in India..............................................................................10

Beyond Eros International Judgment.......................................................................................12

Conclusion................................................................................................................................12

Bibliography.............................................................................................................................14

2
 Acknowledgment
On the completion of this project I find that there are many persons to whom I would like to
express our gratitude, since without their help and co-operation the success of this educative
endeavour would not have been possible.

I welcome this opportunity to express our sincere gratitude towards my IP Dispute Resolution
guide Ms. Kanika Dhingra for his continuous guidance and encouragement throughout the
course of this work.

I am grateful to the IT Staff for providing all necessary facilities for carrying out this work.
Thanks are also due to all members of the Library staff for their help and assistance at all
times. I would also like thank my friends and classmates for being helpful and a source of
continuous support and for keeping the spirit of competition alive in me.

I would also like to express my deepest gratitude towards my parents who have been the real
driving force for this work.

This project has provided me with an ideal opportunity to express myself and I profusely
thank all those who have lent a helping hand.

Sarah Hasan Usmani

3
 Introduction
With trade volume coupled with fierce competition surging manifold in the last couple of
decades, there has been a proportionate rise in commercial, international trade disputes across
the globe, demanding speedier redressal and disposal of these disputes, not to mention costs
alleviation. Solutions have emerged in the form of Arbitration, Mediation and Conciliation as
the new age tools of conflict manipulation and settlement, and which are generally being
hailed as effective alternative dispute resolution measures in recent times.1

The Alternative methods of dispute resolution have eventually acquired a huge popularity and
utility in the commercial and business- commerce sector. One of the most utilised methods is
the arbitration, most of the parties associated with the commercial transaction nowadays
prefer to opt for arbitration for the settlement of any kind of dispute. Arbitration in particular
works especially well in the areas of commercial and international disputes as a quasi-judicial
system developed to counter the snags of litigation and an over-burdened judiciary.2

Considering that intellectual property disputes are principally commercial in nature and often
have international dimensions because of people protecting their properties or licensing them
in multiple jurisdictions, the ambit of this project is to explore how the mechanism of
arbitration have been applied to conflict management of intellectual property rights and to
gauge its effectiveness quotient for the future. One cannot ignore that IPRs are now an
integral constituent of intangible corporate assets of a corporate entity and demand the same
treatment and benefit of law as their corporeal counterparts.

Though with the enactment of the Arbitration and Conciliation Act of 1996 (based on the
UNCITRAL Model Laws of Arbitration) and in departing from the earlier, outdated Act of
1940, India has clearly taken the right step in the right direction, as a practice to be adopted,
‘arbitration’ is nascent, still evolving, and yet to gain a foothold in India. Woefully, the spirit
and the philosophy behind the conception of the law is missing in its implementation despite
the new beginning, as the system seems plagued with loopholes and shortcomings for not
having adequately developed to be the quick and cost-effective mechanism for resolution of
commercial disputes as is supposed to be. Nonetheless, the fact that during 2004-2007, the
Supreme Court decided 349 arbitration cases and the Delhi High Court’s mediation and

1
Arbitration and Intellectual Property, http://www.lexmantis.com/pdf/May-2013-LexMantis-Arbitration-And-
IP.pdf
2
Shamnad Basheer, Apocalyptic Arbitration of IP Disputes, https://spicyip.com/2016/04/18085.html

4
conciliation centre decided 668 out of 868 cases, indicates a growing appreciation of the
importance of arbitration as an alternate dispute resolution mechanism in India.

What is Arbitration?
Arbitration is a consensual means of dispute resolution, requiring all parties involved to
submit the matter to arbitration, failing which this method of dispute resolution would fail to
operationalise. The agreement to arbitrate, which embodies the consent of the parties, obtains
a binding force as a result of national and international support extended to it through
domestic and international law.3 Most jurisdictions have modified their domestic laws to
reflect the Model Laws prepared by UNCITRAL and recommended for adoption by the
United Nations General Assembly. Internationally, instruments such as the New York
Convention on the Recognition and Enforcement of Foreign Arbitral Awards 1958, adhered
to by 156 States, provided for expedited enforcement of a valid arbitration agreement and
award rendered in a contracting state in the territory of another contracting.4

As a method of dispute resolution, arbitration involves selection of arbitrators who act as

judges in disputes submitted to them for adjudication. Thus even though there is an element
of adjudication (similar to court based system), unlike the courts the adjudicators are selected
by the parties. The advantage of the latter lies in the fact that the selection could now be
based on the expertise of the arbitrators, familiarity with the applicable laws, business
practices, industry practices, customs, preservation of commercial relationships, etc.,
allowing for a better and more efficient resolution of disputes. 5 Adjudication of highly
technical and at times complex problems posed by intellectual property disputes require
adjudicators with definitive background and knowledge of intellectual property to fully grasp
and understand the nuances of the underlying intellectual property, be it plant varieties,
computer software, etc. Presence of such adjudicators tend to substantially reduce the time
and cost involved in educating a judge about the intellectual property in dispute. An evolved
understanding of the industry including its practices ensures a less protracted, costly and
more efficient resolution of disputes.

3
Gary B Born, International Commercial Arbitration, Vol I, Wolters Kluwer, 2009
4
Status of the Convention on the Recognition and Enforcement of Foreign Arbitral Awards New York, 1958
http://www.uncitral.org/uncitral/en/uncitral_texts/arbitration/NYConvention_status.html.
5
Gregg A Paradise, Arbitration of Patent Infringement Disputes: Encouraging the Use
of Arbitration through
Evidence Rules Reform, 64 Fordham L Rev. 247, 1995
http://www.law.harvard.edu/programs/olin_center/papers/pdf/232.pdf.

5
As a process, arbitration allows for adoption of a flexible procedural setup including rules,
active case management in the instance of institutional arbitration, favourable governing law,
a high degree of confidentiality, flexibility of remedy, limited review, finality, expedited
enforceability of awards, to name a few of the advantages it holds over state based court
adjudication.6 Arbitration thus presents a better and more preferred solution especially in
instances of international disputes.7

However it would be inaccurate to suggest that arbitration scores on all aspects as compared
to a court based adjudication system. Arbitrators lack the breadth of authority ordinarily
enjoyed by courts, and consequently lack jurisdiction over a non-consenting party.

Additionally international commercial arbitration is by no means a less expensive option. 8It

further lacks a defined quality control mechanism of the nature seen in courts leading to
suspect quality of adjudication. Procedurally arbitration suffers from increased
judicialisation, limited or no discovery, limited access to information, lack of predictability of
outcome, to name a few

Relation Between Arbitration And IPR

Resolving Intellectual Property Rights issue through alternative dispute resolution proceeding
was a technique long developing. It is the arbitration of disputes especially; institutional
arbitration is becoming important for the sectors that are growing in India in the context of
liberalisation and globalization. Intellectual Property rights are as strong as the means that
exist to enforce them. In this context, arbitration, as a private and confidential procedure, is
increasingly being used to resolve disputes involving intellectual property rights, especially
when involving parties are from different jurisdictions. Institutional arbitration is a process
that is not “ad hoc” or decided by arbitrators chosen case by case by the parties to a dispute
by mutual agreement or named by the courts but by arbitrators by the panel of institution who
have been chosen by their in depth knowledge of different fields, and have to follow norms,
including in relation to fees, set by institution. All these sectors are increasingly characterized
by international transactions, where the laws applicable vary from country to country and
involve a high level of specialization in the domain concerned. Another common factor is the
6
2015 International Arbitration Survey, Improvements and Innovations in International Arbitration, Queen
Mary and PwC, http://www.arbitration.qmul.ac.uk/docs/164761.pdf.
7
2013 International Arbitration Survey, Corporate Choices in International Arbitration: Industry Perspectives,
http://www.arbitration.qmul.ac.uk/docs/123282.pdf.
8
Fox and Weinstein, Arbitration and Intellectual Property Disputes,
http://www.micronomics.com/articles/Arbitration_and_Intellectual_Property_Disputes.pd
f.

6
criticality of time, considering that patent terms are limited, and technology could become
obsolete fast, and hence the long duration taken by courts to settle dispute beyond, the scope
for appeal goes against the interest of disputants. Hence arbitration offers these sectors
advantages particularly valuable for them. The main obstacle to using arbitration to resolve
Intellectual Property Rights disputes is the issue of its subject matter arbitrability.

Intellectual Property rights are territorial and are primarily derived from the legal protection
granted by the local sovereign power, which affords the grantee certain exclusive rights to
use and exploit the rights. It is argued that disputes in relation to its agent, validity and the
extent of rights granted should be determined only by the authority which granted the right or
in certain situations by the courts of that country. This had an effect that the rights and
entitlements to IP and the legal issues which flowed from those rights could not usefully be
referred to or considered by an arbitration tribunal. Where however, the parties enter into
arrangements relating to the development, use, marketing or transfer of IP rights granted,
disputes arising from such commercial arrangements could be arbitrated without any
controversy arising from the issue of its arbitrability. Such matters are generally regarded as
inner parties’ commercial matter and are tribunal.

Why arbitration is used as a mechanism to solve the dispute in Intellectual Property

Rights Conflicts?
In the U.S, the United States Supreme Court has reviewed this question several times, with an
answer dependent on certain circumstances. In AT&T Technologies, Inc v. Communication
Workers of America9, the court held that the question of whether parties contractually agreed
to arbitrate is to be decided by the court, not the arbitrator, unless the parties clearly and
unmistakably provided otherwise.Granite Rock Co. International Brotherhood of
Teamstersreached the same result. A court may order arbitration of a particular dispute only
where the court is satisfied that the parties agreed to arbitrate the dispute and formed an
agreement to arbitrate. But in Rent A Centre West v. Jackson10, the court held that the
arbitrators decides the question of whether an issue is subject to arbitration so long as parties
clearly and unmistakably provided for such a determination and the validity of agreement to
arbitrate such threshold issues is not specifically challenged.

IP arbitrations are rare because among other things, IP disputes frequently do not involve a
pre-existing contractual relationship. Arbitration however requires a contractual agreement to
9
AT&T Technologies, Inc v. Communication Workers of America , 475 U.S. 643 (1986)
10
Rent A Centre West v. Jackson, 561 US 63 (2010)

7
arbitrate. Further some countries do not allow arbitral tribunals to rule on issue of patent
invalidity is frequently asserted as a defence to an action brought under a license agreement,
these disputes tend to be litigated in court. Accordingly, the use of arbitration as a mechanism
to resolve such disputes is generally consistent with public policy in most jurisdictions even if
certain public policy based restrictions may limit the arbitrability of intellectual property
disputes in certain countries. As a result, the grounds of in arbitrability of intellectual
property disputes are quite narrow and should not restrict the parties for conceptualizing and
planning in advance how an intellectual property arbitration could successfully be structured
and what factors should be taken into consideration in this framework.

Can intellectual property disputes be arbitrated in India?

Indian jurisdiction has not yet clearly solved the issue of whether intellectual property
disputes can be arbitrated in India. A review of the major IP laws enacted by the legislature
would include the Patent Act, Trademarks Act, and Copyright Act. The relevant provisions of
the legislation would be - a) The Patents Act, 1970 – section 104, b) The Trademarks Act
1999, – section 134, and c) Indian Copyright Act 1957 – section 55 r/w section 62, does not
provide a clear answer.

Another legislation which may prove to be a possible source of resolution would be the
Indian arbitration law. Arbitration in India is governed by the Arbitration and Conciliation
Act 1996, which governs both the domestic and international commercial arbitration seated in
India. The Act also incorporates provisions dealing with awards originating in foreign seated
arbitration. In particular, Section 2(3), (4) and (5) of the Act designate this law as lex
generalis clearly noting that it would give way for laws by virtue of which certain matters
may not be submitted to arbitration. Additionally an arbitration happening under any other
law would be governed by provisions of the 1996 Act in the absence of contrary provisions in
that law.

Attitude towards arbitration

Indian arbitration law has long recognised that an arbitral tribunal can do what a civil court
can except where special powers are endowed on a tribunal. In other words, all civil matters
can be arbitrated unless specifically made inarbitrable. From the start the Indian judiciary has
acknowledged a pro-arbitration stance incorporated in the law noting clearly that where

8
arbitration is statutorily permitted and agreed to between the parties no party could be
permitted to unilaterally avoid the same.11

Additionally a clear stricture has been enunciated whereby any judicial authority (understood
as inclusive of any tribunal and not just the court) when faced with a valid arbitration
agreement must refer the matter to arbitration.12

The focus on seeking alternative dispute resolution mechanisms also led to other
developments in law. In particular, was the amendment made to the Indian Code of Civil
Procedure 1908, whereby Section 89 was introduced, with the intention to facilitate greater
out of court settlements through utilisation of ADR processes before trial commences. A civil
court while operating under Section 89 could refer the disputing parties to arbitration,
conciliation, judicial settlement or mediation.13

A mandatory duty has been imposed on the court to make its best endeavour, in every
matter, to refer it to one of listed methods of alternate dispute resolution. Considering
arbitration is an adjudicatory process, all parties involved have to provide their consent for
reference, before such a reference could be made.14 This however does not mean that the
consent to arbitration or an arbitration agreement had to pre-exist the dispute or even the
initiation of the matter before the parties. Indeed, if such an arbitration agreement had pre-
existed then the matter would have been referred to arbitration under Section 8 of the
Arbitration and Conciliation Act 1996.

Arbitrability in India – principles established

The spectrum of arbitrability in India is understood as part of the broad spectrum of public
policy, and following the UNCITRAL Model Law 1985 template, provided for under a
separate provision of Section 34.2.b.i. Grounds under this provision are referred to as ex
officio, which implies that court retains the power to scrutinise an arbitral award before it
even in instances where these grounds have not been specifically raised by the challenging
party.

Section 34.2.b.i provides that an award, where the subject-matter of the dispute is not capable
of settlement by arbitration under the law for the time being in force in India, will be a
nullity. Though the term subject matter remains undefined, it has been understood to be the
11
R. Parthasarathy, India: Arbitrability of IP Issues, https://www.managingip.com/Article/3774158/India-
Arbitrability-of-IP-issues.html?ArticleId=3774158
12
PAG Raju v. PVG Raju, (2000) 4 SCC 539
13
Section 89, Code of Civil Procedure, 1908
14
Afcons Infrastructure Ltd v. Cherian Varkey Construction Co Ltd (2010) 8 SCC 24.

9
right in the property including a cause of action and relief claimed. 15 Thus the relevant law in
India would be the lex specialis and the 1996 Act. To begin with, the latter does not
enumerate a list of matters it considers inarbitrable, leaving it to other enactments to exclude
disputes from under arbitration. Consequently, if the lex specialis makes a matter inarbitrable,
the 1996 Act gives way and treats that matter as incapable of being arbitrated. 16If however the
lex specialis remains silent on the question of arbitrability, one has to revert to the 1996 Act
for guidance. From a perusal of the arbitration law in India one can note certain matters as
inarbitrable, for instance in instances of international commercial arbitration, a matter that is
not in respect of a defined legal relationship, would be inarbitrable. Similarly such a
relationship should also be considered as commercial under the law in force in India. 17 This
distinction is not the same as a distinction drawn between contractual or non contractual
relationships. A defined legal relationship and commerciality then becomes a threshold
requirements.

Clearly therefore the applicable law provides for two instances wherein any matter becomes

inarbitrable: (a) where their reference to arbitration is expressly barred, and (b) where the
subject matter of the dispute is incapable of being settled using arbitration as a method of
dispute resolution.

Different laws for varying reasons, including creation of exclusive tribunals, withdraw
matters to exclusive public domains. In India for instance criminal offences; matters relating
to winding up, amalgamation or takeovers under the Companies Act 1956; recovery of debt
by banks under the Recovery of Debts due to Banks and Financial Institutions Act 1993;
disputes under Electricity Act 2003; matrimonial and guardianship matters; testamentary
matters; etc are few examples of exclusion.

A different problem arises when one attempts to interpret the principle of ‘incapable of
settlement by arbitration under the law’. A strict interpretation would have limited this
principle as referring to those matters wherein a specific law would have explicitly ousted
arbitration. And yet that is not how this particular principle has been understood within the
arbitration conspectus. Indian courts have developed interpreted it to include within its fold
an implicit ouster based on the principle of public right.
15
Indu Malhotra & OP Malhotra, The Law and Practice of Arbitration and Conciliation,
3 ed., Thomson Reuters,
rd

2014, page 1317.

16
Section 2.3 of the Arbitration and Conciliation Act,1996
17
Section 2.1 of the Arbitration and Conciliation Act,1996

10
Ouster based on right in rem
In principle, all civil or commercial disputes that can be adjudicated upon by a court, in turn
are capable of adjudication by an arbitral tribunal. In a seminal case, Booz Allen Hamilton
Inc. v. SBI Home Finance Ltd & Othrs 18, (Booz Allen) the Supreme Court of India elaborated
upon the concept of arbitrability in Indian arbitration law. It observed that the meaning of the
concept of arbitrability would vary according to the contexts, and distilled three prominent
understandings:19

a. whether disputes having regard to their nature fall exclusively within the domain of public
fora (court) or whether it is a dispute that could be resolved by a private forum?

b. whether the disputes are covered by arbitration agreement or whether the parties have
excluded the disputes from under the purview of agreement?

c. whether the parties have referred the disputes to arbitration?

Elaborating further the court observed, that where the matter concerned an action in rem, it
would be a matter of public policy to have such matters adjudicated within the public fora. A
judgement which concerns a right in rem, would operate in rem, and therefore could not be
dealt with by an arbitral tribunal since it had no authority to bind non-parties. Therefore, for
the court, all disputes relating to rights that operated in personam could be resolved through
arbitration, while those disputes that concerned in rem rights had to be necessarily
adjudicated by public tribunals. However the court went on to clarify that the noted rule was
not a rigid one. It observed that in personam rights flowing from rights in rem were clearly
arbitrable.20The court also in passing acknowledged the remedy or relief theory for
determining arbitrability, noting that where remedies sought would have in rem effect, such
remedies could not be granted by private fora. Such matters would be considered as
inarbitrable.21

Intellectual property arbitration in India

In India generally disputes with intellectual property as subject matter are considered to be
inarbitrable. This however is not an inflexible rule. A range of commercial transactions can
happen around intellectual property including sale and assignment. Such transactions mostly
would be pursuant to a contract and it is equally possible for such agreements to contain an

18
Booz Allen Hamilton Inc. v. SBI Home Finance Ltd & Othrs, (2011) 5 SCC 532
19
Supra at note 13
20
id
21
Supra at note 13

11
arbitration agreement. Disputes under or in relation to such contracts are ordinarily subject to
arbitration. Such contractual disputes would also fulfil the Booz Allen dictum of being in
personam disputes and therefore be capable of adjudication by arbitration.

In EROS International Media Limited v. Telemax Links India Private Ltd. 22, which pertained
to a copyright infringement action, responding to a request by the applicant for reference to
arbitration, the defendant resisted the application on ground of inarbitrability since the
disputes pertained to IP. It further argued that remedy against violation of right in rem could
be granted only by a civil court and not by an arbitrator.

The court began with a clear enunciation that there could not be an absolute principle to the
effect that all disputes relating to intellectual property are inarbitrable. It went on to observe
and rightly so, that the present matter arose from a contract and the dispute even though
pertaining to copyright infringement arose from the operation of a contract, and therefore
clearly concerned an in personam right. It thus drew pertinent conclusion, namely that even
in instances where rights in rem are in focus, if disputes concerning them arose under or in
relation to a contract, such disputes could be arbitrated provided the parties to the contract
had entered into a valid arbitration agreement. In a similar matter concerning trademark
infringement, in Suresh Dhanuka v. Sunita Mohapatra23, the apex court raised no objection to
request for arbitration in a matter that was covered under the deed of assignment.

As noted earlier, the above cases affirm an understanding that where intellectual property
rights are covered under a contractual agreement, any dispute concerning these rights that
arise out of such contractual relation would be arbitrable. It is therefore necessary to evaluate
a specific scenario, namely defences raised in an infringement suit, which has the potential to
block a possible arbitration. For instance, if in an infringement suit, the defence of ownership
or validity is raised, would the matter still remain arbitrable? This question is of particular
importance from another standpoint. If parties are allowed to avoid arbitration agreement by
the raising the defence of ownership or validity then it would make entering an arbitration
agreement a futile exercise given the ease with which it could be avoided. Yet at the same
time one cannot lose sight of the fact that the parties could not have validly agreed to submit
a matter to arbitration that was inarbitrable in the first place.

22
EROS International Media Limited v. Telemax Links India Private Ltd., Notice of Motion no. 886 of 2013 in
Suit no. 331 of 2013, Bombay High Court (MANU/MH/0536/2016).
23
Suresh Dhanuka v. Sunita Mohapatra, AIR 2012 SC 892

12
But responding to the scenario noted above, resolving questions of validity or ownership
would have in rem repercussions, which only a court or special authority vested with special
powers would be able to do. As noted above arbitral tribunals would be incapable of
adjudicating such matters rendering such disputes as inarbitrable.

Beyond Eros International Judgment

The problem with arbitrability test is that the test used in the Booz Allen case is based on the
right in question, had Eros International followed this test to the T, the dispute in question
would not have bee arbitrable since the right arising in Copyright is right in rem. 24

The court in the present case has used the test which is based on the nature of the remedy
sought which is in personam owing to the fact that the dispute arose from a contract between
two parties. The court took advantage of this statement of the court in Booz Allen: “[t]his is
not […] a rigid or inflexible rule. Disputes relating to sub-ordinate rights in personam
arising from rights in rem have always been considered to be arbitrable. (emphasis
added)”.

Hence, the Arbitrability test is still not clear.

The issue in Eros International has gone into appeal before the Supreme Court now and hence
the position of India on arbitrability of IP disputes is still not defined. It all comes to the
approach of the Supreme Court now, whether the Court will take a pro-arbitration approach
or an anti-arbitration approach, we will know only once the decision comes. If the Supreme
Court takes a pro-arbitration approach, then there are very thin chances of them including
issues of validity of an IP in the list of arbitrable disputes. The only disputes which can be
included in the list, according to me, would be the disputes relating to the licensing contract
or any other contractual issues.

Conclusion
A clear distinction is drawn in instances of intellectual property whose grant requires State
action such as registration for instance patents and trademarks, and other types of intellectual
property which are not required to be registered. Equally, a clear distinction is drawn between
purely contractual disputes where validity or ownership is not an issue in dispute, and
otherwise. Further demarcation is done on the basis of whether the dispute requires
adjudication on the question of validity or ownership of the concerned intellectual property.

24
Arbitrability of Copyright Disputes, https://indiacorplaw.in/2016/05/arbitrability-of-copyright-disputes.html

13
Traditionally, arbitrability, the question of whether the subject matter of a dispute may be
resolved through arbitration, arose in relation to arbitration of certain IP disputes. As IP
rights, such as patents, are granted by national authorities, it was argued that disputes
regarding such rights should be resolved by a public body within the national system.
However, it is now broadly accepted that disputes relating to IP rights are arbitrable, like
disputes relating to any other type of privately held rights. Any right of which a party can
dispose by way of settlement should, in principle, also be capable of being the subject of an
arbitration since, like a settlement, arbitration is based on party agreement. As a consequence
of the consensual nature of arbitration, any award rendered will be binding only on the parties
involved and will not as such affect third parties.25

At first blush, a perusal of the Indian statutory and case laws gives an impression of blanket
inarbitrability of disputes concerning intellectual property. This has partly been owing to the
adoption of the rights in rem and relief theories. However the courts have also acknowledged
that ancillary in personam disputes arising from in personam rights were arbitrable.

A perusal of existing literature also indicates that the question of privately resolving
intellectual property disputes has primarily been dealt within the arbitration law spectrum and
never really within the intellectual property rights domain. The National Intellectual Property

Rights Policy 2016, while making ‘strengthening of enforcement and adjudicatory

mechanisms for combating intellectual property rights infringements’ as one of the objectives
in its mission statement, makes an obscure remark that ADR methods may also be explored.26

There is very little discussion on the question of arbitrability of disputes concerning

intellectual property rights. Internationally, while implications of arbitrating intellectual
disputes have been extensively discussed, India lags behind in coherently addressing this
question either statutorily or through a national policy. Courts then are left with the
unenviable task of ascertaining and in instances constructing the policy.

I would like to conclude by saying that arbitration is an effective method of dispute resolution
for IP disputes in both domestic and international context because it is a speedier method.
However, more intricate details have to be looked into, like how arbitration is for right in
personam and not right in rem. The IP disputes, interestingly include both the rights, they can
be enforced against a person as well as against public at large. For example, patents is against
25
WIPO, Why Arbitration in Intellectual Property?, https://www.wipo.int/amc/en/arbitration/why-is-arb.html
Objective 6, National Intellectual Property Rights Policy 2016,
26

https://dipp.gov.in/sites/default/files/National_IPR_Policy_English.pdf

14
the public at large, however if you give an exclusive license, it becomes right in personam.
Therefore, according to me court proceedings is the way to go if you are questioning the
validity of the IP or there is an infringement issue. Arbitration, at this stage is not capable of
adjudicating on these matters, however if there is an issue in IP Licencing then arbitration can
be sort after.

Bibliography
Articles:

 Arbitration and Intellectual Property, http://www.lexmantis.com/pdf/May-2013-

LexMantis-Arbitration-And-IP.pdf
 Shamnad Basheer, Apocalyptic Arbitration of IP Disputes,
https://spicyip.com/2016/04/18085.html
 Status of the Convention on the Recognition and Enforcement of Foreign Arbitral
Awards New York, 1958
http://www.uncitral.org/uncitral/en/uncitral_texts/arbitration/NYConvention_status.ht
ml.
 Gregg A Paradise, Arbitration of Patent Infringement Disputes: Encouraging the Use
of Arbitration through Evidence Rules Reform, 64 Fordham L Rev. 247, 1995
http://www.law.harvard.edu/programs/olin_center/papers/pdf/232.pdf.
 2015 International Arbitration Survey, Improvements and Innovations in
International Arbitration, Queen Mary and PwC,
http://www.arbitration.qmul.ac.uk/docs/164761.pdf.
 2013 International Arbitration Survey, Corporate Choices in International
Arbitration: Industry Perspectives,
http://www.arbitration.qmul.ac.uk/docs/123282.pdf.
 Fox and Weinstein, Arbitration and Intellectual Property Disputes,
http://www.micronomics.com/articles/Arbitration_and_Intellectual_Property_Dispute
s.pdf.
 R. Parthasarathy, India: Arbitrability of IP Issues,
https://www.managingip.com/Article/3774158/India-Arbitrability-of-IP-issues.html?
ArticleId=3774158
 WIPO, Why Arbitration in Intellectual Property?,
https://www.wipo.int/amc/en/arbitration/why-is-arb.html

15
  Objective 6, National Intellectual Property Rights Policy 2016,
https://dipp.gov.in/sites/default/files/National_IPR_Policy_English.pdf
 Arbitrability of Copyright Disputes, https://indiacorplaw.in/2016/05/arbitrability-of-
copyright-disputes.html

Books:

 Gary B Born, International Commercial Arbitration, Vol I, Wolters Kluwer, 2009

 Indu Malhotra & OP Malhotra, The Law and Practice of Arbitration and Conciliation,
3rd ed., Thomson Reuters, 2014.

Cases:

 AT&T Technologies, Inc v. Communication Workers of America, 475 U.S. 643 (1986)
 Rent A Centre West v. Jackson, 561 US 63 (2010)
 PAG Raju v. PVG Raju, (2000) 4 SCC 539
 Afcons Infrastructure Ltd v. Cherian Varkey Construction Co Ltd, (2010) 8 SCC 24.
 Booz Allen Hamilton Inc. v. SBI Home Finance Ltd & Othrs, (2011) 5 SCC 532
 EROS International Media Limited v. Telemax Links India Private Ltd. , Notice of
Motion no. 886 of 2013 in Suit no. 331 of 2013, Bombay High Court
(MANU/MH/0536/2016).
 Suresh Dhanuka v. Sunita Mohapatra, AIR 2012 SC 892

Statutes

 Section 89, Code of Civil Procedure, 1908

 Section 2.3 of the Arbitration and Conciliation Act,1996
 Section 2.1 of the Arbitration and Conciliation Act,1996

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