Arbitrability of Intellectual Property Rights: Consultation on Arbitration (Amendment) Bill 2016

The Department of Justice in December 2015 issued a consultation paper on the arbitrability of intellectual property rights, with a proposed Arbitration (Amendment) Bill 2016 (“Bill”).

At present, there is no specific legislative provision addressing the arbitrability of intellectual property rights in Hong Kong. The Government thus intends to introduce legislative amendments to the Arbitration Ordinance (Cap. 609) to make it clear that intellectual property disputes can be made the subject matter of arbitration and that it will not be contrary to public policy to enforce an award solely because the award is in respect of a dispute or matter which relates to intellectual property rights. The effect is that enforcement of an award under Part 10 of the Arbitration Ordinance would not be refused in Hong Kong under either the arbitrability ground or the public policy ground merely because the award involves intellectual property rights.

The proposed amendments to the Arbitration Ordinance would help (i) clarify the ambiguity in relation to the “arbitrability of intellectual property disputes” in a case where Hong Kong has been chosen as the seat of arbitration or Hong Kong has been chosen as the governing law of the arbitration; (ii) make Hong Kong more appealing than other jurisdictions for conducting arbitration involving intellectual property disputes; and (iii) demonstrate to the international community that Hong Kong is committed to developing itself as an international centre for alternative dispute resolution involving IP matters as well as an IP trading hub in the region.

The Law Society supports the initiative to offer and boost Hong Kong’s arbitration services over intellectual property disputes to assist in the promotion of Hong Kong as an intellectual property trading hub. However, it also expressed concerns over certain aspects of arbitrability of intellectual property disputes, especially validity and infringement, which are not universally recognised. The full submission can be found on the Law Society’s website (http://www.hklawsoc.org.hk/pub_e/news/ submissions/20160525.pdf).

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