Arbitrating IP Disputes In HK: What Are The Choices For Governing Rules?

2 November 2021
 

What are the choices for governing rules for arbitration in Hong Kong?
 

In most arbitrations, parties will agree to conduct an arbitration administered by an institution. It is possible to also agree to ad hoc arbitration, but this is not recommended for IP cases even if UNCITRAL Arbitration Rules for ad hoc arbitrations are used. First, it is not possible to get emergency relief in an ad hoc arbitration.  Second, the procedures under the UNCITRAL rules for the appointment of arbitrators are cumbersome and may take up a lot of time. Third, it is not possible to apply for interim measures in Mainland China in an ad hoc arbitration seated in Hong Kong.
 

In institutional arbitration, the institution takes over the responsibilities for the administration of the arbitration, and most importantly, if the parties cannot agree, for the appointment of arbitrators.
 

In Hong Kong, for intellectual property cases, there are a number of institutions that can administer IP cases.  These are:
 

• The Hong Kong International Arbitration Centre (“HKIAC”) has a specialist IP Panel and handle many disputes involving China and other Asian countries.

• The China International Economic and Trade Arbitration Commission (“CIETAC”), China’s leading arbitral institution, administers numerous arbitrations in the Mainland of China and has also established an office in Hong Kong to administer arbitrations under the Hong Kong Arbitration Ordinance. CIETAC HK arbitrations proceed under the CIETAC Rules.

• The International Chamber of Commerce (“ICC”) Court of Arbitration also has offices in Hong Kong and administers a number of Hong Kong seated IP cases.

• The World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Center also provide arbitration and mediation services under its own rules for intellectual property disputes with specialist IP panels. A Hong Kong seat can be chosen under the WIPO Rules.
   

In institutional arbitration, the arbitration agreement will provide for the application of the rules of the chosen arbitral institution.  Institutional rules set out basic principles governing the commencement of arbitration, the appointment of – and challenge to – arbitrators, the composition of the panel, conduct of the arbitration (such as pleadings, evidence, joinder and security for costs), the form of awards and decisions and fees to be paid.
 

Most institutional rules provide for emergency relief where a party requires an urgent injunction prior to the constitution of the arbitral tribunal. The HKIAC, WIPO, ICC and CIETAC all have rules providing for emergency relief.
 

WIPO also has issued rules for expert determination. Expert determination can be used to determine a narrow technical point between the parties without proceeding to full arbitration. For example, if the parties cannot agree if a part of a product has a certain function, but agree that if it does a patent is infringed or, if it does not, a patent is not infringed, they could agree to an expert determination on this issue. WIPO gives three other examples of cases appropriate for expert determination.
 

Supplemental rules
 

In the case of both institutional and ad hoc arbitrations, the parties are free in their agreement to set out any other rules or procedures to be applied, such as the qualifications of the arbitrators, rules governing the production of documents and how evidence is to be admitted.
 

One commonly agreed set of rules is the International Bar Association Rules on the Taking of Evidence in International Arbitration. The rules set out procedures for the production of documents, calling of witnesses, preparation of expert reports and calling expert evidence. It also includes rules on the admissibility of evidence. Even if not agreed as part of the arbitration agreement, the parties will often agree, or the arbitral tribunal will order, that the IBA Evidence Rules will be used for guidance.

Special directions in IP cases

 

IP cases may require special directions. For example, in cases involving patents, it is recommended that the tribunal give directions for pleading infringement and validity that includes the preparation and filing of claim charts.
 

 

The parties may also wish to agree to a confidentiality regime over and above the general requirement for confidentiality in domestic statutes and the rules of the institution. This can be done by entering into a special confidentiality agreement or asking the tribunal to impose one if it cannot be agreed between the parties. An example of the need for such an agreement would be the disclosure of commercial processes by a Respondent to show they had not been using the Claimant’s processes. The Respondent would not want this information to be shared with Claimant generally but instead request for limited disclosure or “Outside Counsels’ Eyes Only” disclosure.