Arbitrability of IP Disputes in the EU and the US

Research project


Gabriel M. Lentner


As intellectual property (IP) plays an ever-increasing role in the world economy, disputes over IP ownership, validity, licensing, infringement et cetera, become more frequent. For some time now, businesses have recognized the benefits of having IP disputes resolved through arbitration rather than in courts. This is particularly true in the international context, as the recourse to arbitration offers many advantages, including the confidentiality of the proceedings, the experience of arbitrators, and the international recognition and enforcement of awards.
While very few legal systems today exclude arbitration of IP disputes altogether, national legal systems tend to take different approaches to the issue of arbitrability of disputes concerning intellectual property rights. It is therefore important to know what types of disputes can be brought before arbitration.
For these reasons, this study aims at providing legal certainty in this area and compares US law to that of the EU and its major jurisdictions. The study distinguishes between two basic types of IP rights: those that ordinarily require registration and those that do not. It is important to distinguish different issues that may give rise to legal disputes regarding each of those types of IP rights: existence and validity, ownership, contractual obligations arising from the transmission or the licensing of the exploitation of IP rights, and non-contractual obligations emerging from the breach of those rights. The study further analyses and critiques normative implications of arbitrability in the different jurisdictions, in light of the public policy issues of IP.