Putting the “TEAM” in Arbitration of Intellectual Property Matters
The new economy is an overwhelmingly knowledge-based economy, which means that contracts, software licenses, and agreements between companies, vendors, or suppliers have become increasingly focused on intellectual property issues such as software theft, copyright infringement, trademark infringement, trade secret misappropriation, and other intangible assets of a company. These contracts often have arbitration provisions related to any disputes, which may arise between the parties. The “TEAM” factors below apply to any intellectual property arbitration and include Timing, Experts, Appointment, and Management of an arbitration proceeding.
These TEAM factors are important considerations for any party arbitrating an intellectual property dispute. Timing – Arbitrations with the amount of dispute between $75,000 to $500,000 are often arbitrated within 7 months of filing. While arbitration is generally configured to narrow the issues, often times the process requires fact-finding, depositions, and other pre-trial procedures similar to trial. Whether you are a plaintiff or defendant, 7 months to prepare for arbitration is a very compressed schedule and focusing on the key issues and tasks early is required in order to effectively manage as well as prepare for the arbitration.
Experts – Whether for damages or liability issues, experts are often needed in arbitration. Because most arbitrations move quicker than a typical court case consulting with experts early and identifying issues that may need an expert opinion is essential for any party. If expert reports are required obtaining discovery that may be needed by an expert early in arbitration is essential.
Appointment of Arbitrator – Selection of the arbitrator is crucial to any party in arbitration. For example, if your case is built upon complex legal arguments then seeking an arbitrator that has deep experience with the particular legal issues is likely preferred. Typically a list of arbitrators is provided to both parties and each party has a certain number of strikes. Both parties should take the selection process seriously and focus on their case themes in deciding which types of attributes a preferred arbitrator should have in order to hear the case. Some considerations could include experience of the arbitrator, familiarity with the causes of action or defenses, or the technological experience of the arbitrator.
Management of Proceedings – Arbitrators have broad discretion in managing the arbitration. Each arbitration is unique in the manner the arbitrator conducts the proceedings. Some arbitrations are handled like trial and others are much more informal. In the end, the conduct of parties and their attorney dictate how the arbitrations proceed and special attention to each arbitrator’s preference is recommended. Practice tip: reviewing motions, orders and publications attributed to an arbitrator can provide invaluable insight into the arbitrator’s preference of evidence, writing style, and general thoughts on certain causes of action or defenses.
Focusing on the TEAM factors can help any party arbitrate an intellectual property matter and are paramount to the success of each party.
Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the IP litigation firm and its IP attorneys may be found at www.klemchuk.com.
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