LS&HC Horizons 2023 - Flipbook - Page 41
Hogan Lovells | 2023 Life Sciences and Health Care Horizons | Patents, Litigation, and Beyond
Arbitrating international patent disputes: opportunities and challenges
Life science companies subjecting their
international patent disputes to arbitration
may benefit from certain advantages compared
to state court litigation: triers of fact who are
scientifically well-versed, a neutral forum
with an agreed-upon applicable legal regime,
worldwide enforcement, and confidentiality.
What makes arbitrating patent disputes
particularly attractive is that it offers resolution
of global disputes in a single proceeding by one
legal team, avoids bifurcation of infringement
and invalidation (as would be the case when
litigating, e.g., in Germany, Japan, or China),
as well as having to separately enforce patents
in national courts in each jurisdiction where
the alleged infringement takes place. It is
thus often more cost and time efficient
than litigation.
These benefits apply not only to patent disputes
involving contractual questions, but also to
arbitrating patent validity and infringement
disputes. But the latter may present certain
challenges. Clients should specifically bear in
mind two issues:
• First, they should consider whether the
courts where enforcement of the award will
likely be sought recognize the arbitrability of
patent validity and infringement. While more
and more courts do so (including the Munich
District Court in a recent decision), there are
still some countries in which recognition and
enforcement may be denied on the basis of
the public policy-exclusion under the New
York Convention.
• Second, they should be aware of so-called
“carve-outs” in the arbitration agreement,
subjecting only contractual claims to
arbitration while excluding certain IPclaims. Even if factually closely intertwined,
the respective claims have to be pursued in
separate proceedings, which may translate
into an increase of time and costs and
conflicting decisions.
We are happy to support our clients as a truly
global team across offices and continents that
is well-versed in the substantive law as well as
in international arbitration, as we recently had
the opportunity to show in a highly contested
bet-the-company licensing dispute.
Karl Pörnbacher
Partner, Munich
Corey T. Leggett
Counsel, San Francisco
Thomas N. Pieper
Counsel, Munich
Juliane Reschke
Associate, Munich
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