Rivoire on the Law Applicable to Arbitrability of Registered IP Rights
Maxence Rivoire (PhD Candidate at the University of Cambridge and an incoming Lecturer in French Law at King’s College London) made available on SSRN his paper on ‘The Law Applicable to the Arbitrability of Registered Intellectual Property Rights’. In 2022 the paper won the Nappert Prize in International Arbitration awarded by McGill University.
The abstract reads as follows:
Although the power of an arbitral tribunal is subject to the will of the parties, some legal systems exclude certain types of intellectual property (IP) disputes from arbitration. This problem is commonly known as ‘arbitrability’. But what law, if any, should international arbitrators apply to arbitrability? This article addresses this question with a special focus on registered IP rights. Part I rejects the conflict rules that have traditionally been suggested to govern arbitrability, including the application of the law governing the arbitration agreement and that of the arbitral seat (lex loci arbitri). Part II argues that arbitrators should instead recognize the existence of a transnational principle whereby contractual, infringement, and ownership disputes are arbitrable. However, due to persisting uncertainty and differences among jurisdictions on the arbitrability of issues relating to the validity of registered IP rights, arbitrators should still give effect to domestic rules in this area. Acknowledging that non-arbitrability rules aim to safeguard the policy objectives of substantive IP laws and to protect the exclusive jurisdiction of national courts. Part III argues that the law applicable to the arbitrability of validity issues should be the law of the country for which IP protection is sought (lex loci protectionis), which corresponds to the law of the country where the IP right is registered. After examining the justification of this principle, Part III also discusses its practical implementation, notably where the dispute concerns IP rights registered in different countries, and where the lex loci protectionis clashes with the lex loci arbitri.
The author proposes a useful framework for international arbitrators who have to deal with conflict of laws relating to the arbitrability of registered IP rights such as patents and trademarks.