Licensavtal med skiljeklausul - en civilprocessuell studie av skärningspunkten mellan den utomobligatoriska, till viss del offentligrättsliga, immaterialrätten och det inomobligatoriska licensavtalet

Sammanfattning: The practice of licensing intellectual property enables greater exploitation and commercialization of intangible assets. Arbitration clauses are frequently incorporated into license agreements. When the licensee violates provisions in the license agreement in a manner that infringes upon the licensor’s intellectual property rights, competing grounds of responsibility follow. These disputes arise at the intersection of the non-contractual, partially public, intellectual property law and the contractual license agreement. This paper identifies and analyses the procedural problems which arise in these disputes. Without an arbitration clause, it must be assumed that the licensor may choose to conduct a contractual action or to conduct an infringement action. This paper finds that this freedom, most likely, remains regardless of the incorporation of an arbitration clause in the license agreement. The doctrine of assertion is, as the paramount doctrine, likely used to determine jurisdiction. Therefore, the licensor can conduct an infringement action in general court, regardless of the arbitration agreement. The licensee’s contractual objection probably does not affect this assessment. However, it is uncertain whether the respondent’s objections are taken into consideration or not due to contradictory cases. However, if the licensor invokes alternative grounds, both contractual and non-contractual, it cannot be ruled out that the doctrine of connection is used to determine jurisdiction. Thereby the non-contractual ground may be considered embraced by the arbitration clause. Only disputes concerning matters in which the parties may reach a settlement are arbitrable. This paper states that due to the public law features that characterize intellectual property law, the licensor’s claims and the licensee’s objections may be non-arbitrable. The licensor’s infringement claim is most likely arbitrary. However, a reductive interpretation of the scope of the intellectual property right may be non-arbitrable. Furthermore, the arbitrability of the prohibition claim is unaffected by the licensor requesting a fine. Additionally, it is uncertain whether an objection that claims that the intellectual property right is invalid, as a incidental matter with impact inter partes, is arbitrable. The views in the jurisprudence differ regarding whether it is possible to settle a non-arbitrable matter as a incidental matter. The possible impact on third parties of an invalidation trial is also a controversial issue. Thus, the legal situation is unclear. Furthermore, since the arbitration clause only covers one of two closely related yet independent legal relationships, the principles of litispendens and res judicata raise issues here. Again, the views differ in the jurisprudence. Most likely, however, a matter that is not covered by a forums jurisdiction, and therefore not settled in that forum, cannot be considered resolved. As a result, the dispute may be resolved both by arbitration and in general court. In conclusion, parties that include an arbitration clause in their license agreement cannot possibly predict the consequences thereof. This paper illustrates that the legal situation is ambiguous and therefore unsatisfactory for both parties and decision makers. The arbitral award may be considered invalid or set aside upon motion of a party, and the dispute risks being settled both by arbitration and in general court. The consequences thereof are costly and time-consuming. The benefits that were sought by the parties when they incorporated the arbitration clause are lost and it is argued that the legal situation is profoundly dissatisfactory.