Can you arbitrate IP disputes - yes you can

First Hong Kong legislated and now Singapore is proposing similar legislation to clarify that parties are able to arbitrate disputes about intellectual property rights, including patents, trade-marks, designs, copyright and domain names.

The Hong Kong Arbitration Ordinance was amended last year to make it clear that disputes about the enforceability, infringement , subsistence, validity, ownership, scope, duration or any other aspect of an intellectual property right could be arbitrated as well as disputes over transactions and compensation payable for such rights.

The Singapore Ministry of Law has released a consultation paper suggesting similar amendments to the Singapore International Arbitration Act. The consultation paper states that this is to clarify the arbitrability of intellectual property disputes (which is not prevented currently) and give greater certainty to users in order to support the development of Singapore as an IP dispute resolution hub.

Both the legislation in Hong Kong and proposed legislation in Singapore make it clear that it is not contrary to public policy to enforce an award that is in respect of a dispute on intellectual property rights. Such an award is only binding on the parties - such that if an award holds a patent invalid this is only between the parties to the arbitration and does not effect the validity of the patent otherwise.

Companies looking to protect and exploit their intellectual property should have no concern about providing for arbitration in their contractual arrangements.