RENTSCH
PARTNER_{Attorneys at Law and
Patent Attorneys}

Introduction and Overview

Arbitration related to trademark and patent issues plays an important role in agreements such as licensing, technology transfer, joint venture agreements etc.
 
Arbitration proceedings are, in almost all cases, related to a contractual relationship in which the parties had previously agreed to arbitration.

IP infringement issues may therefore arise either in the form of a breach of contractual duties or as a tort, not covered by the specific agreement that includes the arbitration clause.

National courts as well as arbitration courts may be involved in the same dispute, the first for preliminary injunctive relief, the latter – or some-times even both – in parallel ordinary infringement proceedings. This may cause challenging situations, both for courts, arbitral tribunals and parties alike.

Today, most arbitration is “institutionalised arbitration”, i.e. the parties agreed to arbitrate any dispute under specific rules provided by an administrative body or arbitration institution, such as the WIPO Arbitration Rules, the ICC Arbitration Rules or the Swiss Arbitration Rules.

The arbitration proceedings are then based on said rules.

Timing

It may be one of the major advantages of arbitration that the proceedings up to a final and enforceable arbitral award should not take as long as national court proceedings in at least some countries. Some arbitration rules even provide for a timeline, which is to be observed by the tribunal.

Moreover, appeal to higher court instances may be severely limited, which may be an advantage from a pure perspective of timing.

Is arbitration suitable for all disputes?

Most national jurisdictions consider IP infringement disputes to be arbitrable.

Do national courts have exclusive jurisdiction in patent validity matters?

Most jurisdictions consider the issue of patent validity to be a matter of exclusive national sovereignty. This is why most national laws or case law do not allow the enforcement of arbitral awards, which declare a patent to be invalid (exceptions are e.g. Belgium and Switzerland).

Arbitral Tribunals may avoid this pitfall by obliging the patent owner to withdraw his patent from the respective patent registries and/or forbidding the inter partes enforcement of a patent (considered to be invalid by the arbitral tribunal) against the alleged infringer.

Jurisdiction of Arbitral Tribunals in infringement matters

IP infringement questions, especially when related to a contract containing an arbitration clause, are generally suitable for arbitration.

Conflicting Jurisdictions?

There are disputes where both national courts and arbitral tribunals are called upon by either party to decide an issue. This is not a problem, as long as the issues at stake are clearly different, e.g. if a national court is called to issue provisional measures only, and the arbitral tribunal is called to decide the case on the merits.

It becomes more challenging, if both courts are called by one of the two (or more) parties to decide on the same issues. The national court as well as the arbitral tribunal will then have to decide whether the case filed is within their jurisdiction.

Legal basis - Applicable Substantive and Procedural Laws

If no choice of law is made, challenging questions of international private law (law on code of conflicts) may have to be resolved in the arbitration dispute.

Contractual rights and obligations are generally at the parties’ discretion to decide which substantive law applies. It may be important in patent or trademark disputes, however, to keep in mind that some national laws may have special rules when it comes to formal legal requirements relating to the patent or trademark registry etc., which are not at the disposition of the parties.

If the parties agreed on some institutionalised arbitration, the procedural laws are generally clear and can further be clarified by the arbitral tribunal in the course of setting out the process. Often, the parties can be brought to agree on the IBA Rules on the Taking of Evidence in International Arbitration or further clarification is obtained by making reference to the UNCITRAL Model Law on International Commercial Arbitration.

Cost Implications

Generally speaking, on the one hand, arbitration proceedings are more costly than national court proceedings in civil law countries. On the other hand, arbitration may involve less cost intensive discovery proceedings than any US proceeding. Moreover, lack of appeal possibilities may also have a cost reducing effect when compared to any national proceedings with one or two higher court instances.

Most European arbitration rules provide for reasonable attorney fee compensation for the prevailing party, which generally covers the actual and full attorney fees (which is often not the case in national litigation). Additionally, the losing party may have to bear the court costs.

Enforcement

Most nations worldwide are member states of the so-called New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards of 1958.

In many states, it might therefore be “easier” to enforce an arbitral award with the help of a local national enforcement agency (mostly courts), rather than to enforce a national court judgement, which is foreign to the country where enforcement is sought. The contracting parties to the New York Convention have to recognize arbitral awards issued in another (contracting) state as binding and to enforce them in accordance with their rules of procedure. There are only very limited grounds that can be invoked against the enforcement of an award.

Nexus to UPC Agreement and Rules

The UPC agreement makes provision for the establishment of a patent mediation and arbitration centre in Ljubljana and Lisbon (Article 35 UPCA). The rules of procedure further emphasise that the court is required to explore with the parties the possibility of a settlement, including through mediation and arbitration, using the facilities of the patent mediation and arbitration centre in Ljubljana and Lisbon (Rule 11 UPC ROP).

The importance of ADR has increased significantly in recent years also following a series of reviews and reforms suggested by the European Council and Commission aimed at facilitating access to justice across the member states. One of the results of these reviews was Directive 2008/52/EC on certain aspects of mediation in civil and commercial matters (the “EU mediation directive”), aimed at harmonising the rules applicable to cross-border mediations in the EU.

Aside from a conventional negotiation between parties, which typically involves no intervention from a third party, all of the remaining ADR options involve varying degrees of intervention form a third party and can be divided into those which are non-binding and those which are binding on the parties.

Non-binding ADR options

The most common non-binding option is mediation, a voluntary negotiation between disputing parties facilitated by a neutral third party mediator.

Binding ADR options

The most common binding form of ADR is arbitration a process where parties refer a dispute to one or more arbitrators, instead of a national court, and agree to be bound by the arbitration decision (“award”). The arbitrators may be chosen by the parties or nominated by an arbitration institution; they are usually legally trained and highly experienced in the handling of arbitration proceedings and the special field of the dispute, such as patent infringement disputes etc. The decision of the arbitrator(s) is legally binding on both sides and enforceable almost worldwide, based on an international convention, if necessary, with the support of national enforcement authorities (usually courts).

Expertise

Did your company sign an agreement with an arbitration clause and are you now exposed to arbitration in this matter - possibly in English?

Rentsch Partner has extensive experience in arbitration proceedings esp. relating to intellectual property rights („IP“).

Introduction

Alternative dispute resolution (ADR) is a term used to cover a range of non-litigation solutions to disputes between parties. The most common forms of ADR encountered in IP disputes are mediation and arbitration.

Many Institutions, e.g. the die Swiss Chambers Arbitration Institution, the World Intellectual Property Organization (WIPO) or the International Chamber of Commerce (ICC) and many others offer institutionalized arbitration.

Arbitration proceedings have, when compared to state court proceedings some advantages and some disadvantages:

• Confidentiality: Arbitration proceedings are not public and may therefore be treated confidential if agreed so by the parties.
• Flexibility: The place of arbitration and the language of the arbitration can be chosen by the parties. The proceeding is generally more flexible than state court proceedings.
• Efficiency: Arbitration proceedings, most of the time, are more swiftly than state court litigation. They often cannot be dragged through several state court instances and thus delay the resolution of a conflict .
• Experience: When choosing an arbitrator, specific experience of candidates can be taken into consideration.
• Enforceability: Arbitral awards are often easier to enforce outside of Europe than national judgments.
• Costs: However, arbitration proceedings are often more expensive than state court litigation (except in the USA and possibly the United Kingdom) where state court proceedings can be quite expensive, too, and where arbitration may be a more cost efficient alternative.
• Provisional measures: Also, it can be more difficult to obtain and enforce interim measure through arbitration. However, in recent years many institutionalized arbitration organizations have put in place what are called “emergency arbitration” rules, which may allow provisional measures to be obtained swiftly.

Renowned international publications such as Managing Intellectual Property (MIP), Intellectual Asset Management (IAM), World Trademark Review (WTR) and Chambers Europe have awarded our firm repeatedly. Below is a selection of recent commendations.

IP STARS from Managing IP

Switzerland – Firm of the Year 2023 – Patent Prosecution

"Rentsch Partner is a boutique which is highly recommended for patent protection and litigation work. The firm has European patent attorneys for technical fields such as mechanics, chemistry, computer technology, and electrical engineering. The key patent attorneys include Louis Lagler, Andrea Carreira, Alfred Köpf and Dany Vogel. Vogel, who specialises in computer technology, and Köpf, who handles biotechnology work, are non-permanent judges of the Swiss Federal Patent Court. For disputes, the firm has experienced lawyers such as Christian Hilti, Gregor Wild and Matthias Städeli. Hilti and Städeli also hold judicial positions. Wild and Städeli specialise in soft IP work. The partners are supported by consultants, patent engineers and associates."
IP STARS from Managing IP

Chambers Europe

"Rentsch Partner is a boutique firm handling the full range of IP matters. The law firm has particular strength in contentious cases, representing clients in patent litigation and arbitration. The team also advises on trade mark administration and strategy. The lawyers are able to provide services to clients from industries including biotechnology and mechanical engineering."
Chambers Europe 2024

Strengths Provided by Chambers
"They were not only able to cover our needs but excelled by providing new ideas."
Intellectual Property client Europe

"Their understanding of the technological field and proposed strategy were very good."
Intellectual Property client Europe

WTR

"One of the top firms in Switzerland, Rentsch Partner always provides the best support in all IP matters, and is appreciated for its professionalism and skill in the field. Its attorneys are reliable, knowledgeable and take the time to explain the facts clearly and in a way that is easy to understand.” Delivering the A-to-Z trademark service, Gregor Wild appears in each of the prosecution and strategy, enforcement and litigation, and transactions tables. He earns plaudits for his “outstanding IP knowledge, solutions-oriented approach and ability to break new ground. He is a proactive practitioner who is a joy to work with.” Seasoned litigators Maria Iskic and Matthias Städeli also come highly recommended. “Maria delivers a polished service to a terrific client list, and is highly knowledgeable, forward thinking and focused on delivering solutions.” “Matthias is an experienced lawyer with a deep knowledge of the law. He is helpful, responsive, gets straight to the point and is impressive in his strategic approach.” Another name to keep on the radar is Christian Hilti. He keeps up to date with industry developments to provide the most relevant advice and craft the best arguments. WTR 1000 debutant Fabio Versolatto earns wholly positive praise from the market for being “a talented lawyer with a wide scope of legal knowledge. He is reliable, skilled and highly experienced when it comes to trademark filing strategies, dealing with office actions and defending trademarks against third parties, as well as contractual matters. Fabio is always able to explain the facts clearly and makes specific recommendations that lead to success."
WTR 1000 2024

IAM Patent 1000

"Operating on both sides of the contentious/non-contentious divide, Rentsch Partner is one of the best firms for patent work in Switzerland. The group aids clientele at every stage of the patent lifecycle, and its practitioners are proactive, committed to the client and at the top of their fields. The team handles applications smoothly, even if they fall under new categories.” On the contentious front are Christian Hilti and Demian Stauber. Alongside patent attorney Louis Lagler, they come highly recommended: “Stauber has been very supportive in the past in developing an IP strategy and has been part of the strategy workshops with our business units alongside Hilti and Lagler. With their help, we have been able to raise and develop our staff’s awareness of functioning IP strategy.” Lagler has broad knowledge in the field of IP and knows how to use it well. Creativity, reliable work, swift response times and a great grasp of technical details are just some of the characteristics of Lagler that patrons appreciate. They benefit from his commitment to their business needs and an interest in technical developments. Also holding down the fort on the non-contentious side are Dany Vogel, Andrea Carreira and Alfred Köpf. “Vogel has profound knowledge in new technologies. His expertise is of the greatest benefit to every client. He is committed to his clientele and offers goal-oriented discussions.” Combining almost three decades of experience and in-depth life sciences expertise, Carreira is an asset to those seeking litigation and arbitration support. “With a pragmatic approach and an open-minded attitude, Köpf is an expert on patent applications related to all kinds of technology."
IAM Patent 1000 2023

Legal 500

"Rentsch Partner AG is an intellectual property specialist firm that covers all areas of IP law and any related areas. The ‘extremely professional, responsive and knowledgeable‘ team, headed by Gregor Wild, combines lawyers, patent attorneys and engineers and ‘seamlessly handles intellectual property work‘ covering areas such as mechanical engineering, materials science, electrical engineering, computer science, chemistry and biotechnology. The group shows particular strength in patent litigation. ‘Very experienced litigator‘ Christian Hilti, Magda Streuli-Youssef, Matthias Städeli, Louis Lagler, Dany Vogel and ‘very smart patent attorney‘ Alfred Köpf are further key contacts."
Legal 500 2022

Don’t let your US lawsuit dominate your business!

Rentsch Partner and Halcyon form an exclusive partnership to bring a business approach to US patent and trademark lawsuits: Our partnership works to achieve an outcome-based legal result at “the best cost” for the client (money, time and management distraction).

Rentsch Partner understands patent and trademark law; Halcyon understands Swiss and US business practices.

We work to define our clients’ legal and business goals. We quantitatively and statistically assess the legal situation, model case costs and outcomes, match US Outside Counsel to legal strategy then continuously adjust legal tactics to best meet the clients’ goals.

Training – Halcyon teaches document management (good documents / bad documents, and how to avoid creation of bad documents). The proliferation of electronic communication in business has created a rich opportunity for lawyers to find damaging documents in an adversary’s database.

Halcyon prepares witnesses for depositions and/or cross-examinations, especially persons who are not familiar with the US litigation system.

Records review and production – We can help minimize the (computer-based) selection of documents for production, thus minimizing the costly volume of documents to be reviewed.

Records Management – We have constructed Records Management Policies and deployed them company-wide. This is a lengthy process of proactive benefit for future lawsuits.

Teaching – Urs Tanner teaches at the University of St. Gallen (HSG St. Gallen) in various modules (MLP, WRM, Corporate Counsels Day etc.). Carr Lane Quackenbush and Urs Tanner also teach at Harvard Business School – AMP (Advanced Management Program).

Publishing – Urs Tanner, Erfahrungen eines Unternehmers im Umgang mit amerikanischen Anwaltskanzleien, in: Management von Anwaltskanzleien - Leo Staub und Christine Hehli Hidber – Schulthess Juristische Medien AG – Zürich 2012 – S. 145ff.

Business experience:

Urs Tanner (Swiss) and Carr Lane Quackenbush (American) the owners and founders of Halcyon, have together more than 50 years business experience as CEO or President of American or European multi-national corporations.

Legal experience:

For over 30 years, combined, they have successfully supported corporate clients in civil or class action lawsuits, patent infringement litigation (Defendant and Plaintiff), antitrust litigation (horizontal and vertical price fixing) or product liability cases. Criminal cases include Swiss individuals with US Indictments as well as support of “Category 2” banks negotiating with the US Department of Justice for NPA’s (Non Prosecution Agreements).
Together, they have managed nearly 50 US lawsuits, been deposed almost 30 times and cross-examined twice in front of a jury. They have been through settlement procedures, District Courts, the Courts of Appeals and handled U.S. Supreme Court Petitions.
As a Swiss, this broad and deep exposure to US business and to US lawsuits has given Urs Tanner important insights to the litigious U.S. environment, lawsuit strategy, tactics and cost control.

We work to minimize the loss of business resources consumed in the resolution of a US lawsuit. Halcyon are experienced business people teamed with Rentsch Partner’s legal expertise. Together, we help business executives manage their US lawsuits, US lawyers and US legal process to best meet the client’s defined business goals. Often these are to achieve lawsuit goals at minimum total cost, in minimum time and with minimum management distraction.

Halcyon has developed a step-by-step process to objectively, quantitatively and statistically evaluate the legal situation, a “tool kit” to help establish a rational litigation strategy, to control lawsuit costs and to provide a financial basis to guide critical legal decisions.

Briefly, our process is to:

• Research and statistically analyze Judges, Jurisdictions and lawyers (Early Case Assessment). The most critical issue in a suit is the judge’s impartiality and decisiveness, often more important than facts in the case. It is also critical to understand the opposing party’s motives and who is actually controlling the case: the opposing party or the opposing counsel (contingency fee, patent trolls, etc.).
• Construct quantitative and probability modelling of the case (costs, outcomes) to guide key decisions and settlement offers (sunk costs, risk-reward profile, quantified case statistics).
• From this informed position, we help clients define reasonable and achievable litigation goals.
• We select US Outside Counsel considering the Judge’s record and the client’s litigation goals. Then, to ensure that US Outside Counsel is fully aligned with the client’s litigation goals, we construct an Alternate Fee Structure (AFS) which switches Outside Counsel from hourly billing to compensation based on meeting the client’s lawsuit goals (paradigm shift).
• Finally, all legal tactics and expenditures (money, duration, management involvement time) are continuously reviewed and adjusted to best meet our client’s goals.