Originally from:
Arbitration of International Intellectual Property Disputes - Hardcover
Arbitration of International Intellectual Property Disputes - Electronic
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—Chapter 7—
DISCLOSURE AND ADMISSION OF EVIDENCE IN THE INTERNATIONAL ARBITRATION OF INTELLECTUAL PROPERTY DISPUTES
Joseph P. Zammit, Todd R. Hambidge and Jamie Hu
I. Introduction—the Need for Disclosure in Intellectual Property Cases
Intellectual property disputes may be extremely complex and technical, and much of the information necessary to mount an effective claim or defense may be in the exclusive possession of the adverse party or of non-parties. For example, in a dispute over royalties due under a patent license, the sales of the licensee will only be revealed in its private financial records or, in the same dispute if an inequitable conduct defense is raised, the knowledge of the licensor-patentee of the prior art may be relevant but may only be disclosed in the patentee's internal email.
The parties in IP litigation in United States courts take for granted that they will be able to obtain broad discovery1 of documents and information in the possession of their adversary and non-parties in order to prove their cases. This is true because the liberal discovery provisions of the Federal Rules of Civil Procedure, or state law counterparts, apply. But such assumptions are incorrect, and potentially dangerous, when parties have agreed to have their IP disputes resolved by arbitration, particularly if the arbitration is international in character.2
When deciding whether, and how, to submit such disputes to resolution by arbitration, the parties are well advised to ensure that they have a firm grasp of the pertinent rules and practices of the various arbitral institutions that administer international IP arbitrations, the constraints imposed by local law at the proposed seat or seats, and how they may agree to disclosure rules to serve their objectives. Agreeing to arbitration without considering such issues may be a recipe for disaster. This is particularly so for an international IP dispute.
CHAPTER 7
Disclosure and Admission of Evidence in the International
Arbitration of Intellectual Property Disputes
Joseph P. Zammit, Todd R. Hambidge and Jamie Hu
I. Introduction--the Need for Disclosure in Intellectual Property Cases
II. The Background of Discovery and Disclosure in International Arbitration
III. General Practices in Modern International Arbitration
A. Types of Evidence Admissible in International Arbitration
B. Depositions and Interrogatories
C. Third Party Discovery
IV. Arbitral Rules Pertaining to Disclosure
A. London Court of International Arbitration Rules
B. AAA/ICDR Rules and Guidelines
C. UNCITRAL Rules
D. ICC Rules of Arbitration
E. WIPO Arbitration Rules
F. Singapore International Arbitration Centre Rules
G. The Rules and Guidelines of the CPR
H. JAMS International Rules and JAMS Rules
I. IBA Evidence Guidelines
V. Electronic Document Disclosure
A. Local National Law and Electronic Document Disclosure
B. Arbitral Rules Regarding Electronic Document Disclosure
C. The CIArb Protocol for E-Disclosure in Arbitration
VI. The Seat of Arbitration and Its Effect on Disclosure
A. United States' Laws that Aid Disclosure
B. The English Arbitration Act of 1996
C. The Singapore Arbitration Acts
D. French Arbitration Law
E. Swiss Private International Law Act
F. Multinational Laws to Assist with Disclosure
VII. Privilege and Its Effect on the Scope of Disclosure
A. The Concepts of Privilege among Different Jurisdictions
B. Privilege between Clients and Patent Agents
C. The Rules of Arbitral Institutions with Respect to Privilege
D. Proposals to Determine Privilege Issues in International IP Arbitration
VIII. Sanctions for Noncompliance with Arbitrator's Disclosure Ruling
IX. Conclusion
Joseph P. Zammit is a Partner in the international law firm of
Fulbright & Jaworski L.L.P. He heads the New York office’s
Intellectual Property and Technology Department, and is also a senior
member of Fulbright's litigation department and international and
domestic arbitration practice groups. Mr. Zammit has 40 years of
experience litigating intellectual property and complex business
disputes, with a concentration on computer, telecommunications and
technology related legal matters. His practice includes both traditional
court litigation and arbitrations involving patent, copyright and
trademark infringement, misappropriation of trade secrets, unfair
competition and hardware and software product performance disputes.
As lead counsel, Mr. Zammit has successfully tried over 50 cases,
including jury trials, bench trials and arbitrations. He also sits as an
arbitrator in technology-related matters. Mr. Zammit has repeatedly
being selected for inclusion in Best Lawyers in America, Best Lawyers
in New York and New York Super Lawyers. He has been recognized
in Legal 500 U.S. Guide for his skills in patent litigation involving hitech
electronics and information technology. Mr. Zammit also serves
as an adjunct professor of law at St. John's University, where he has
taught a course on "Computers and the Law" for nearly 30 years.
Todd R. Hambidge is an Associate in the New York office of the
international law firm of Fulbright & Jaworski L.L.P.. His practice
focuses on intellectual property and business litigation. His experience
includes intellectual property litigation and international arbitration,
trademark and copyright prosecution, trademark portfolio management,
and intellectual property licensing. He has been recognized as a "rising
star" by the New York Super Lawyers.
Jamie Hu is an Associate in the international law firm of Fulbright &
Jaworski L.L.P.. She assists clients with a variety of intellectual
property matters, including patent prosecution, due diligence and
patent litigation. Dr. Hu’s practice focuses on helping clients develop
and protect their intellectual property assets in the United States and
abroad. She has prepared and prosecuted patents in a variety of
technology areas, including biotechnology, pharmaceuticals,
chemicals, and medical devices. Dr. Hu has also been involved in
commercial arbitrations and co-authored several articles on arbitration.
