Hong Kong’s Arbitration Amendment Bill 2016 was gazetted on 2nd December 2016. Senior Partner, Mr. C. K. Kwong, delivered a talk on the same day at the session entitled “Resolution of IP Disputes – Recent Development” at the Business of IP Asia Forum 2016 (the session was co-organized by the Department of Justice and Hong Kong Trade Development Council). Mr. Kwong’s power point presentation can be found at http://www.sfks.com.hk/upload/newsfile/0000000045.pdf

Opening remarks were delivered by SJ Rimsky Yuen. The Panel included Andrew Liao SC, Justice Anthony Rogers and Joe Liu (Managing Counsel of HKIAC).

The idea of the new law was proposed by Mr. Kwong to the Hong Kong Government Working Group on Intellectual Property Trading which was formed to study the overall strategy for promoting Hong Kong as an IP trading hub. The Sub-Group on IP Arbitration and Mediation with Mr. Kwong appointed as Convenor, looked into the strategic area of IP ADR with the view to developing Hong Kong into an IP ADR hub. Mr. Kwong delivered his draft working paper to the Working Group on Arbitrability of IPR when it was set up in May 2015.

This Bill seeks to amend the Arbitration Ordinance (Cap. 609 of the Laws of Hong Kong) to clarify that disputes over intellectual property rights are arbitrable and that it is not contrary to the public policy of Hong Kong to enforce arbitral awards involving intellectual property rights (IPR).

The Arbitration Amendment Bill 2016 was the result of rounds of consultation and after 18 drafts were developed between November 2015 to November 2016. When the new legislation is passed, parties choosing Hong Kong law as the lex arbitri governing the arbitration agreement and/or Hong Kong seat (legal place of arbitration) and the relevant tribunal will not have to worry about jurisdictional issues surrounding arbitrability of IP rights under the New York Convention Articles V(1)(a) and (2)(a)(b) (corresponding to UNCITRAL Model Law – Articles 36(1)(a)(i) and 36(1)(b)(i)(ii).

When the new law is passed, Hong Kong will have an added competitive edge above those jurisdictions which do not provide a clear statutory guidance to address potential concerns and uncertainties on the arbitrability of registered IP rights.
 

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