The Panel currently includes 30 members who speak a total of 7 languages and practice from 12 jurisdictions. Some members are not only experienced arbitrators but also senior counsel, former judges or heads of IP professional organisations. These IP arbitrators collectively offer over 850 years of experience in IP matters including licensing issues, copyright infringements, FRAND disputes, as well as the registration of patents, trademarks and designs.
The Panel is separate from HKIAC’s regular Panel or List of Arbitrators and will be the primary source for HKIAC’s appointment of arbitrators for IP cases. The Panel also represents a convenient source from which parties may draw nominations to constitute arbitral tribunals for IP disputes.
The launch of the Panel coincides with the Hong Kong Government’s publication of a consultation paper proposing new amendments to the already state-of-the-art Hong Kong Arbitration Ordinance (Cap. 609). The proposed amendments are intended to clarify that, among other things, disputes over the subsistence, scope, validity, ownership, scope, infringement or any other aspect of an IP right can be submitted to arbitration in Hong Kong and it would not be contrary to Hong Kong’s public policy to enforce an award concerning an IP right issue. These amendments will be useful in demonstrating Hong Kong’s commitment to developing itself into a global centre for resolving IP disputes and an IP trading hub in the Asia-Pacific region, given its modern legal infrastructure, independent judiciary, robust IP protection and presence of multilingual IP industrial and dispute specialists.
Against this background, HKIAC has been a regular feature in IP licensing agreements and has witnessed a growing number of related disputes being submitted to HKIAC arbitration. As Asia’s leading online dispute resolution service provider, HKIAC has also seen a steady increase in the number of domain name cases being referred to the Centre every year. In 2015, HKIAC handled 227such cases, which represent a 13% growth from 2014. The introduction of the Panel will further strengthen HKIAC’s expertise in IP matters and enhance its capability to handle a broader range of IP disputes.
John Rhie, Managing Partner of Quinn EmanuelUrquhart & Sullivan’s Hong Kong office and the head of the firm’s international arbitration practice in Asia, says “our firm is well known for its expertise in IP disputes and through that I have been able to personally witness a real growth in the number of such disputes, such as FRAND disputes, being handled through international arbitration. The twin initiatives by the HKIAC and the Hong Kong Government continue to put Hong Kong at the forefront of this change and is most welcome for users and practitioners alike”.
Rt. Hon. Professor Sir Robin Jacob, a retired judge of the Court of Appeal of England and Wales and a professor of IP law at University College London, calls the Panel “a very important and welcome development”. He adds “IP disputes can becontractual (particularly license disputes) but also non-contractual. Rather than using the courts, IP disputes – especially international disputes - can be efficiently resolved by specialist tribunals. HKIAC has assembled a panel for these very purposes. Sensible parties will use HKIAC as the nominated arbitral panel in IP licensing contracts and those who have disputes should consider agreeing to have their dispute(s) resolved by a HKIAC arbitration.”