Cross-Border Conflicts of Patents and Designs: a Study of Multijurisdictional Litigation and Arbitration Procedures.

Abstract

This thesis examines procedural litigation problems arising when two parties have a conflict involving the same patent or design, with an impact in several jurisdictions, taking as a case study the litigation procedures of Apple and Samsung. The thesis asks whether this type of dispute is best resolved through a single procedure. If so, what would be the circumstances surrounding such procedure in terms of jurisdiction, applicable law, preliminary injunctions and enforcement of the decisions? It first identifies the problems related to the type of dispute when taking parallel actions in different National Courts. Then it examines the European litigation procedure of patents and designs and assesses how this system addresses the inconsistency of the national litigation regime. It argues that in relation to patents, the Unitary Patent Court (UPC) has the potential to solve some of the problems identified in the thesis and that a similar unitary system should be extended to disputes involving designs. However, in the absence of an effective international court system outside the EU for global disputes, it suggests that a single arbitration procedure is still needed. The thesis identifies the main legal barriers to an arbitration procedure as being: bringing the parties to arbitrate, the arbitrability of the dispute, the identification of applicable law and the need for preliminary injunctions. It is concluded that: the agreement to arbitrate should be facilitated by the authorities so that it is appealing to the parties; the arbitrability can be resolved by limiting the effect of the judgment to the parties; a flexible approach can be adopted to applicable law through the application by the arbitrator of ‘choice of law’ rules; and, even when a preliminary injunction is needed, the parties may recur to arbitration. The thesis concludes that the primary benefit of a single arbitration procedure would be the creation of a single award enforceable at international level