Patent Arbitration - Abiding By the Rules
by Robert J. Rose of Sheldon, Mak, Rose & Anderson
The arbitration of all patent disputes, including patent validity, is governed by 35 USC § 294 and the Federal Arbitration Act, Title 9 of the U.S. Code. Of special note, and likely to be overlooked, is the statutory obligation to give notice of any award by an arbitrator to the USPTO. A copy of the award is then made a part of the file history for the patent in issue. While the award is final and binding between the parties to the arbitration, it has no force or effect on any other person, and is unenforceable until the required notice is received by the USPTO.
The Rules for Non-Administered Arbitration of Patent & Trade Secret Disputes available on-line and published by the 
(known simply as CPR) are crafted specifically with patent disputes in mind. The rules are non-administered, and can be tailored for use with any appointing authority. The notice of arbitration requires a list of the patents, patent claims and/or the general area of alleged trade secrets involved. Within the first six weeks the parties must make early disclosure, including a computation of damages. An initial pre-hearing conference is spelled out, including each party’s proposed construction of terms in the asserted patent claims, plaintiff’s claim charts and defendant’s responsive claim charts, and the defendant’s identification of prior art, if any. The scheduling contemplates six months from commencement to submission, including a discovery period. Interrogatories are limited to 10 per party, and depositions are limited to 8 hours, 5 per party. A confidentiality order is built into the rules.
The rules also allow for interim relief by a court in urgent circumstances, and provide that such requests are compatible with the agreement to arbitrate, and do not act as a waiver of that agreement.
