IP Arbitration Checklist: Clause Review, Arbitrability Screening, Tribunal Selection, Evidence and Confidentiality, and Award Enforcement

By Casey Scott McKay · 2024-01-13

This checklist drafts, responds to, and runs an intellectual property arbitration, treating the clause as the strategic instrument that fixes forum, expertise, confidentiality, urgent relief, finality, and cross-border enforceability. Phase one screens whether to arbitrate at all against four threshold questions. Phases two through four draft the scope with its patent and registry provisions, select institution and seat against the enforcement map, and specify the tribunal — the single most valuable choice, because a wrong appointment cannot be appealed. Phases five through seven control disclosure, draft confidentiality expressly, and provide for interim relief and consolidation. The remainder runs the proceeding, enforces or resists the award, and audits an existing clause portfolio.

IP and Technology > General IP | Checklist | Published 13 January 2024 - Updated 12 March 2025 | Casey Scott McKay - marksy.us

Summary. This checklist drafts, responds to, and runs an intellectual property arbitration, treating the clause as the strategic instrument that fixes forum, expertise, confidentiality, urgent relief, finality, and cross-border enforceability. Phase one screens whether to arbitrate at all against four threshold questions. Phases two through four draft the scope with its patent and registry provisions, select institution and seat against the enforcement map, and specify the tribunal — the single most valuable choice, because a wrong appointment cannot be appealed. Phases five through seven control disclosure, draft confidentiality expressly, and provide for interim relief and consolidation. The remainder runs the proceeding, enforces or resists the award, and audits an existing clause portfolio.

Keywords: IP arbitration checklist · threshold screening · clause scope review · section 294 patent arbitration · registry carve out · delegation of arbitrability · institution and seat selection · enforcement mapping · tribunal qualifications · arbitrator conflict check · disclosure protocol · confidentiality drafting · emergency arbitrator · consolidation and joinder · procedural conference · expert evidence · costs allocation · award confirmation · New York Convention refusal grounds · clause portfolio audit

How to use this checklist

| Field | Detail | |---|---| | Who runs it | Transactional counsel at drafting; disputes counsel on a live matter | | When | At every licence negotiation; on receipt of a request for arbitration; annually as an audit | | Time required | One hour to draft a clause; a day to audit a portfolio | | Gates | Threshold screen passed; seat checked against assets; qualifications specified | | Output | A drafted clause, a decision note, and a portfolio consistent across related agreements | | Companion documents | Arbitrating an IP Dispute and Deciding It Privately |

The matter. A materials science company licenses a coating process to a manufacturer in another country. The master agreement, a technical schedule, a supply agreement, and a side letter were signed across two years by three different partners. The master agreement's clause names one institution; the supply agreement gives exclusive jurisdiction to the licensor's home courts; the schedule is silent. Six years on, the licensee says the royalty does not attach to a downstream product, the licensor believes its process is being used outside the field, and a former licensee engineer has joined a competitor. The counterparty's assets are in three jurisdictions, none of them its place of incorporation.

Phase 1. Threshold screen: arbitrate or litigate

[ ] Ask whether the remedy must bind the world. Invalidating a patent against everyone, cancelling a registration under 15 U.S.C. § 1119, an exclusion order, a customs seizure. Why. These are public acts a tribunal cannot perform. Trap. Drafting an arbitration clause into an agreement whose likely disputes need registry relief.
[ ] Ask whether a non-party must be bound. Supplier, distributor, co-owner, licensee's customer. Why. Arbitration binds those who agreed, and GE Energy Power Conversion France v. Outokumpu permits non-signatories to compel arbitration through equitable estoppel without solving the reverse problem. Trap. Assuming a group of related companies is covered because one signed.
[ ] Ask whether injunctive speed is decisive. Why. Emergency arbitrator procedures work in days, produce orders binding only the parties, and may need court enforcement. Trap. Choosing arbitration for a relationship whose foreseeable crisis is a departing employee or an imminent launch.
[ ] Ask whether confidentiality is worth real money. Trade secrets, rate structures, incomplete development programmes. Why. This is arbitration's principal attraction in this field. Trap. Treating confidentiality as a preference rather than pricing it.
[ ] [Gate] Record the answers as a decision note with the clause. Why. It answers the question a successor asks in six years about whether the clause was a choice or a copy. Trap. No note, and a portfolio nobody can explain.

Phase 2. Draft the scope

[ ] Draft broadly. Any dispute, controversy, or claim arising out of or relating to the agreement, including formation, interpretation, performance, breach, termination, and validity. Why. Narrow clauses produce threshold fights about coverage — the exact delay the clause exists to avoid. Trap. A clause limited to "disputes under this agreement", which invites an argument about tort and statutory claims.
[ ] Invoke 35 U.S.C. § 294 expressly where patents are involved. Why. It makes provisions requiring arbitration of patent validity or infringement valid and enforceable, with the award final and binding as between the parties and of no effect on any other person. Trap. Relying on a general commercial clause to reach a validity defence.
[ ] Understand what section 294 does not give. Why. An award holding the patent invalid binds these parties; the patent stays on the register and stays assertable against everyone else. Trap. Promising a client a clearance outcome arbitration cannot deliver.
[ ] Diarise the section 294 notice to the Director. Why. The award is unenforceable until the notice is received. Trap. A simple step, routinely missed, that renders a won award inoperative.
[ ] Carve out interim relief. Either party may apply to a court for interim or conservatory measures without waiver of the arbitration agreement or submission on the merits. Why. Most institutional rules say this; saying it in the clause removes the argument. Trap. A silent clause and an opponent arguing waiver.
[ ] Carve out registry proceedings. Either party may bring or defend opposition, cancellation, or invalidity proceedings before a patent or trademark office. Why. Without it a party may be in breach for defending its own registration. Trap. Discovering the conflict when an opposition deadline runs.
[ ] Decide delegation of arbitrability deliberately. Why. First Options of Chicago v. Kaplan leaves it to the court absent clear and unmistakable delegation; Rent-A-Center, West v. Jackson makes a delegation provision separately enforceable; Henry Schein v. Archer & White Sales removed the wholly groundless exception. Incorporating institutional rules empowering the tribunal to rule on its own jurisdiction is generally treated as delegation. Trap. Wanting a court to decide scope while incorporating rules that say otherwise.
[ ] Note separability and procedural questions. Why. Buckeye Check Cashing v. Cardegna sends a challenge to the contract as a whole to the arbitrator and a challenge aimed at the clause to the court; Howsam v. Dean Witter Reynolds assigns conditions precedent and time bars to the arbitrator. Trap. Framing a merits challenge as a clause challenge and losing the point.

Phase 3. Institution and seat

[ ] Choose the institution on rules, not habit. Why. The main options differ materially in administrative involvement, cost structure, expedited procedures, and emergency arbitrator provisions. Trap. Copying whatever the transactional team used last.
[ ] Consider the WIPO Center for technology and IP matters. Why. Rules built for this subject matter and panels with relevant technical backgrounds. Trap. Overlooking the specialist institution in a specialist dispute.
[ ] Treat ad hoc arbitration as an expert choice, not a default. Why. Cheaper, and it asks far more of the parties and the seat's courts. Trap. Ad hoc drafting with no appointing authority named.
[ ] Choose the seat separately from the hearing venue. Why. The seat fixes the procedural law, the supervisory court, and the setting-aside standards; the venue is logistics and virtual hearings have made it minor. Trap. Conflating them, which is the commonest drafting error in the clause.
[ ] Map the counterparty's assets before choosing the seat. Why. A counterparty incorporated in one place with assets in three others presents four enforcement questions. Trap. Choosing a seat for the negotiating team's convenience and discovering the enforcement problem after the award.
[ ] Confirm the enforcement jurisdictions are Convention states and check their Article V practice. Why. The New York Convention has near-universal adherence and application varies. Trap. Assuming adherence equals a friendly enforcement court.
[ ] [Gate] Fix language and governing law in the same clause. Why. Both are omitted with surprising regularity. Trap. A tribunal deciding the language of the proceeding at the first conference.

Phase 4. Specify the tribunal

[ ] Set the number by a monetary threshold. One below, three above. Why. It makes the decision automatic instead of a preliminary dispute. Trap. Silence, which produces an argument at the worst moment.
[ ] Specify qualifications. A degree or equivalent in the relevant technical field, or defined industry experience, or intellectual property practice experience. Why. This is the single most valuable drafting choice in a technical dispute. Trap. Leaving it blank and receiving a generalist panel for a materials science dispute.
[ ] Understand why it cannot be fixed later. Why. Hall Street Associates v. Mattel makes the 9 U.S.C. § 10 vacatur grounds exclusive and Oxford Health Plans v. Sutter makes the deference near-total, so a tribunal that misunderstands the technology produces a final award that is simply wrong. Trap. Assuming a bad decision can be corrected.
[ ] Set the appointment mechanics with deadlines and a fallback. Why. Otherwise a party delays by refusing to engage. Trap. No institutional default appointment where the appointees cannot agree on a chair.
[ ] Treat the chair selection as the decisive one. Why. Where each side appoints a wing arbitrator, the chair decides the case. Trap. Delegating the chair choice to the institution by default when the clause could have specified the mechanism.
[ ] Research candidates properly. Published awards, academic and practitioner writing, prior appointments, industry reputation, and availability. Why. A well-regarded arbitrator with no capacity for eight months consumes the speed advantage. Trap. Appointing on reputation without checking the diary.
[ ] Run the conflict check across the whole relationship. Prior appointments by either party's counsel, board positions, expert engagements, firm relationships. Why. 9 U.S.C. § 10 lists evident partiality as a vacatur ground and an undisclosed relationship is the commonest route to a successful challenge. Trap. Preferring a candidate who discloses nothing over one who discloses thoroughly.

Phase 5. Control disclosure

[ ] Write the protocol into the clause. Why. A silent clause invites a tribunal to import whatever practice the parties' counsel are used to, which erases the cost advantage. Trap. Assuming institutional rules limit disclosure. They set a framework, not a scope.
[ ] Set the standard. Document requests limited to identified categories, with relevance and materiality to the outcome shown. Why. This is the international commercial standard and is dramatically narrower than domestic discovery. Trap. Adopting a standard neither party's counsel has run before without discussing it.
[ ] Address depositions. A defined number or none. Why. Either is workable; silence is not. Trap. A tribunal permitting depositions by default because one side asked.
[ ] Set an electronic disclosure protocol. Custodians, date ranges, search terms, and format — or an express limit to identified documents rather than search-based production. Why. This is where cost escapes. Trap. Leaving it to a mid-proceeding application.
[ ] Specify which privilege rules apply. Why. Parties from different jurisdictions may have materially different concepts of legal professional privilege and in-house counsel privilege. Trap. A tribunal deciding it after the documents have been listed.
[ ] Add confidentiality ring provisions for technical material. External counsel only, external experts under undertakings, and a defined internal group. Why. The point of arbitrating a trade secret dispute is not to disclose it broadly. Trap. A general confidentiality clause that still permits the opposing business team to read the specification.
[ ] [Gate] Check the third-party evidence position. Why. 9 U.S.C. § 7 permits arbitrators to summon witnesses and documents, and its reach to non-party pre-hearing discovery is limited and contested. Trap. Building a case that depends on evidence only a court can compel.

Phase 6. Confidentiality and interim relief

[ ] Do not assume confidentiality. Why. Arbitration is private in that there is no public docket; confidentiality comes from rules, agreement, or a tribunal order, and the regimes vary widely. Trap. Choosing arbitration for confidentiality under rules that protect only the award.
[ ] Cover six things expressly. The existence of the dispute and proceeding; submissions and correspondence; evidence including produced documents; the hearing and transcript; the award; and the identity of the arbitrators where relevant.
[ ] Draft the carve-outs. Legal and regulatory obligations including securities reporting; professional advisers, insurers, and funders under equivalent obligations; disclosure necessary to enforce or challenge; affiliates on a need-to-know basis; and information otherwise public. Why. A confidentiality provision with no carve-outs is unworkable. Trap. A clause the client breaches on the first quarterly report.
[ ] Accept the enforcement limit. Why. Confirmation and enforcement proceedings are public, so an award that must be enforced becomes partly visible. Trap. Promising complete confidentiality. Structure the award so sensitive reasoning is severable from the operative relief.
[ ] Preserve the court route for interim measures expressly. Why. Speed is arbitration's weakest point and the court route is what saves the position. Trap. Relying on institutional rules alone.
[ ] Confirm the tribunal's interim powers. Preservation orders, security for costs, orders restraining conduct pending the award.
[ ] Adopt an emergency arbitrator procedure and say which. Why. Appointment within days and a decision within one to two weeks, and some rules apply only where the clause postdates their adoption. Trap. Assuming the procedure applies to an older clause.
[ ] Plan for the two-track posture. A court application for urgent relief alongside an arbitration on the merits. Why. It is the correct use of two instruments with different capabilities. Trap. A clause drafted to prevent it.

Phase 7. Consolidation and related agreements

[ ] Use the same institution, seat, rules, and tribunal provisions across every agreement in a transaction. Why. Inconsistent clauses make consolidation impossible and guarantee parallel proceedings on overlapping facts with inconsistent findings. Trap. A master agreement, schedule, supply agreement, and side letter drafted by different people across two years.
[ ] Add an express consolidation provision. Claims under any identified related agreement may be heard together at either party's request. Why. Most modern institutional rules provide for consolidation and joinder where the clauses are compatible; the drafting makes the rules available. Trap. Compatible clauses with no consolidation provision, which leaves it to the institution's discretion.
[ ] Identify the entities that will not sign. Customers, downstream distributors, government counterparties. Why. A dispute involving them cannot be fully resolved in the arbitration. Trap. Discovering it when the real defendant is outside the clause.
[ ] [Gate] Separate the consumer template entirely. Why. Stolt-Nielsen v. AnimalFeeds International matters little between negotiated commercial parties and greatly for consumer terms, and consumer clauses need assent design and a structure that survives an enforceability challenge. Trap. One clause for a licensing business and a consumer product, which serves neither.

Phase 8. Running the proceeding

[ ] Bring a draft procedural order to the first conference. Timetable, disclosure protocol, expert arrangements, hearing format and length, confidentiality regime, witness statement treatment. Why. It is the most important event in the arbitration and a party with a proposal usually gets most of it. Trap. Arriving to react to the other side's proposal.
[ ] Front-load the case. Why. Memorials with evidence attached replace the pleading, discovery, and brief sequence, which means the work happens earlier and the case is better understood sooner. Trap. Litigation habits and a thin first submission.
[ ] Manage expert evidence actively. Ask for the experts to confer and produce a joint statement of agreed and disputed points before the hearing. Why. In a technical dispute the expert evidence is the case, and the joint statement focuses the tribunal on the real disagreement. Trap. Two irreconcilable reports and a hearing spent on definitions.
[ ] Consider a tribunal-appointed expert for a narrow technical question, with a defined right for the parties to comment on the report. Trap. No mechanism for comment, which invites a due process challenge.
[ ] Preserve the costs position. Why. Most institutional regimes permit the tribunal to allocate costs including legal fees, which differs from the American default and changes the settlement calculus. Trap. Raising costs for the first time after the hearing.
[ ] Watch the award deadline and press politely through the institution. Why. There is no docket pressure; the parties supply the discipline or nobody does.
[ ] [Gate] Give the 35 U.S.C. § 294 notice where the award touches patent validity or infringement. Why. The award is unenforceable until the Director receives it.

Phase 9. Enforcement and challenge

[ ] Identify the confirmation forum before the award. Why. Badgerow v. Walters rejected the look-through approach for petitions to confirm or vacate, so many applications now belong in state court. Trap. Filing in federal court on an assumption that no longer holds.
[ ] Expect confirmation to be near-automatic. Why. 9 U.S.C. § 9 provides for it absent a vacatur ground.
[ ] Know the exclusive vacatur grounds. Corruption or fraud in procuring the award; evident partiality or corruption in the arbitrators; specified procedural misconduct including refusal to hear material evidence; and arbitrators exceeding their powers or so imperfectly executing them that no mutual, final, and definite award was made. Why. Hall Street holds them exclusive. Trap. Advising a client that a wrong award can be corrected.
[ ] Run the Article V analysis for foreign enforcement. Incapacity or invalid agreement; lack of proper notice or inability to present a case; award exceeding the scope of submission; improper composition or procedure; award not binding or set aside at the seat; non-arbitrability under the enforcing state's law; and public policy. Why. These are the only refusal grounds and they are applied narrowly in most Convention jurisdictions. Trap. Assuming narrow means non-existent.
[ ] Structure relief for foreign enforceability. Why. An award determining patent validity may face a non-arbitrability objection in a jurisdiction treating validity as a public policy matter, even though 35 U.S.C. § 294 permits it domestically. Trap. Winning a validity determination that cannot be enforced where the assets are. Frame relief as contractual — a covenant not to assert, a royalty adjustment, a licence — wherever possible.
[ ] Ask the tribunal to frame the operative relief in enforceable terms. Why. Scope-of-submission challenges arise where relief touches a registration or a right outside the clause's contemplation. Trap. Elegant declaratory language no enforcing court can act on.
[ ] [Gate] Build the enforcement plan before the award, not after. Where the assets are, Convention status, local Article V practice, and whether interim security should have been sought earlier. Why. An unenforceable award is an expensive document.

Phase 10. Working the sample matter

[ ] Map the four agreements and their clauses before anything else. Master agreement naming one institution, supply agreement giving exclusive jurisdiction to the licensor's home courts, technical schedule silent, side letter unchecked. Why. The dispute spans all four and the clauses do not cohere. Trap. Commencing under the master agreement's clause and discovering the supply agreement pulls part of the dispute into court.
[ ] Identify which claim sits under which agreement. The royalty base question is the master agreement. The field-of-use question may be the master agreement or the schedule. The former engineer is a confidentiality question that may sit in the side letter or nowhere. Why. Fragmentation is now a fact to be managed rather than a risk to be avoided. Trap. Assuming one proceeding can resolve all three.
[ ] Test whether consolidation is available. Why. Institutional rules provide for it where the clauses are compatible, and these are not. Trap. Applying for consolidation and losing time on a request that was never going to succeed.
[ ] Deal with the exclusive jurisdiction clause head-on. Why. Arbitration alongside exclusive court jurisdiction produces a threshold dispute about which governs, and that dispute will consume months before anything substantive is reached. Trap. Ignoring it and being met with a motion to stay.
[ ] Treat the former engineer as urgent and separate. Why. A departing employee at a competitor is a matter of days, not months; the emergency arbitrator route is too slow and the court route in the clause — if there is one — is what saves it. Trap. Folding it into the royalty arbitration and losing the position while the tribunal constitutes.
[ ] Check whether the master agreement's clause covers the field-of-use claim. Why. A field-of-use breach may be framed as breach of contract or as patent infringement, and only the second engages 35 U.S.C. § 294 considerations. Trap. Framing it as infringement under a clause that does not reach infringement.
[ ] Map the counterparty's assets against the master agreement's seat. Why. Assets in three jurisdictions, none its place of incorporation, means the seat choice made six years ago determines whether an award is worth having. Trap. Winning an award enforceable nowhere the money is.
[ ] Consider whether a negotiated global resolution beats three proceedings. Why. A royalty adjustment, a field clarification, and an undertaking about the engineer is a licence amendment, and no tribunal can write one. Trap. Litigating three fragments of a relationship both parties want to continue.
[ ] [Gate] Fix the clause architecture in the amendment. Why. Whatever the outcome, the four agreements should emerge with one institution, one seat, compatible tribunal provisions, and a consolidation clause. Trap. Resolving the dispute and leaving the architecture that produced it.

Phase 11. Responding to a request for arbitration

[ ] Read the clause against every related agreement in the first week. Why. Whether the claim falls inside its scope, whether another agreement's clause covers part of it, and whether consolidation is available or fragmentation inevitable. Trap. Answering the request before reading the schedule.
[ ] Decide the jurisdictional position early. Why. If arbitrability is delegated — which incorporating institutional rules generally accomplishes — the tribunal decides it and Henry Schein means a court will not intervene even on a weak argument. Trap. A court application that was foreclosed by the rules the clause incorporated.
[ ] Consider the court routes where delegation is absent. An application to compel under 9 U.S.C. § 4 or a stay under 9 U.S.C. § 3. Trap. Missing the window while preparing a substantive response.
[ ] Check whether a mediation condition was satisfied. Why. Under Howsam the tribunal decides it as a procedural question, and it is worth raising where the condition was skipped. Trap. Treating it as a jurisdictional objection.
[ ] Identify the counterclaim immediately. Why. Arbitration front-loads, and a counterclaim raised late has less room. Trap. Discovering the counterclaim after the first memorial.
[ ] Check whether a validity defence is available under the clause. Why. Only a clause reaching validity — expressly or through 35 U.S.C. § 294 — supports it, and where it does not, the challenge belongs in a registry proceeding. Trap. Pleading invalidity into an arbitration whose clause does not reach it.
[ ] Run the appointment with the same rigour as a claimant. Why. Qualifications specified in the clause constrain the field; where none are specified, propose them at the first opportunity. Trap. Accepting the claimant's proposed chair to appear cooperative.
[ ] Consider the parallel tracks. An administrative invalidity challenge, a declaratory judgment action where the clause permits it, or an application for interim relief. Why. Each can change the arbitration's value before it is properly under way. Trap. Treating the arbitration as the whole dispute.
[ ] [Gate] Arrive at the procedural conference with a proposal. Why. A respondent without one accepts the claimant's disclosure scope, timetable, and confidentiality regime. Trap. Treating the first conference as administrative.

Phase 12. Tailoring by agreement type

[ ] Technology licence with royalty complexity. Specify accounting and industry qualifications alongside technical ones, adopt expedited procedures below a threshold, and add expert determination for the calculation questions. Why. The likely disputes are royalty base and audit questions. Trap. A technical panel with no accounting capability deciding a royalty base dispute.
[ ] Patent licence or covenant. Invoke 35 U.S.C. § 294, carve out registry proceedings, match qualifications to the field, and structure anticipated relief as contractual for foreign enforceability. Trap. A validity award that cannot be enforced where the assets are.
[ ] Joint development agreement. Consolidation across the development and licence agreements, qualifications in the field, and confidentiality covering incomplete programmes and negative results. Why. The likely disputes are ownership and allocation of jointly created results. Trap. Confidentiality drafted for finished products.
[ ] Trade secret or confidentiality agreement. Confidentiality ring provisions and a preserved court route. Why. The confidentiality drafting is the reason for arbitrating, and a departing employee is a matter of hours. Trap. Relying on an emergency arbitrator for a data exfiltration event.
[ ] Trademark coexistence or licence. Sole arbitrator, expedited procedures, and a mediation step. Why. Speed and cost control matter more than technical qualifications, and these disputes settle into coexistence arrangements no tribunal would design. Trap. A three-member technical panel for a scope-of-goods dispute.
[ ] Distribution or supply agreement. Emergency arbitrator procedure and a short award deadline. Why. Termination, inventory, and channel disputes run on a compressed commercial timetable. Trap. A standard timetable against a selling season.
[ ] Acquisition agreement with IP warranties. Ensure escrow and indemnity mechanics reference the same process and the tribunal can direct release from escrow. Trap. An award the escrow agent cannot act on.
[ ] Standard-essential patent licence. Final-offer structure for the rate, a single global determination, and a tribunal with economics as well as technical capability. Why. The alternative is parallel national litigation producing inconsistent rates. Use the rate-setting discipline. Trap. A jurisdiction-by-jurisdiction structure that resolves nothing globally.
[ ] Software or SaaS agreement. Preserve interim relief and set short timetables. Why. The likely disputes are exit and portability questions, which are time-sensitive. Trap. An eighteen-month timetable for a migration dispute.

Phase 13. The clause portfolio audit

[ ] Pull every dispute clause in the licensing portfolio. Why. Most organisations hold dozens, written at different times by different people, never read together. Trap. Auditing the template and not the executed agreements.
[ ] Check consistency across related agreements. Same institution, same seat, same rules, compatible tribunal provisions, and an express consolidation provision within each transaction. Trap. Consistency within a template family and inconsistency within an actual deal.
[ ] Find the internal contradictions. Arbitration alongside exclusive court jurisdiction; a mediation condition precedent with no time limit; a delegation provision beside a reservation of scope questions to a court. Why. Each produces a threshold dispute before anything substantive. Trap. Assuming a signed agreement is internally coherent.
[ ] Flag silence on the four things that matter. Tribunal qualifications, disclosure scope, confidentiality, and interim relief. Why. A clause naming an institution and stopping has left four consequential decisions to a tribunal with no guidance. Trap. Counting a clause as adequate because it names an institution.
[ ] Test enforcement fit jurisdiction by jurisdiction. Why. The seat and the award must be enforceable where the counterparty's assets actually are. Trap. Checking the counterparty's place of incorporation.
[ ] Check patent coverage. Why. Whether the clause reaches validity and infringement, and whether 35 U.S.C. § 294 was invoked deliberately or never considered. Trap. A patent licence whose clause reaches only contract claims.
[ ] Identify template drift. Which version is current, which agreements carry older versions, and whether anything in circulation is materially deficient. Trap. Three template generations in active use.
[ ] Act on three tiers. Fix the template now; push it into the next renewal cycle; and reopen the small number of live agreements whose clauses are bad enough to warrant it — usually the highest-revenue ones, which is not a coincidence. Why. The agreements worth the most generate the disputes fought hardest. Trap. Fixing the template and never touching what is signed.
[ ] Keep a decision note with the template. Why arbitration, why that seat, why those qualifications, why that disclosure standard. Why. Ten minutes at drafting, and it answers the successor's question years later. Trap. Institutional memory that leaves with the partner.
[ ] [Gate] Write down what the audit deliberately did not do. Reopening low-value agreements, harmonising legacy clauses across an acquired portfolio, or pursuing counterparties who will not amend. Why. A documented accepted limit is a governance decision; an undocumented one reads later as an oversight. Trap. An audit report that implies complete coverage.

Phase 14. Budget, timetable, and expectations

[ ] Do not tell the client arbitration is cheaper. Why. It is not inherently cheaper; the costs shift rather than fall. Trap. Setting an expectation the first advance-on-costs invoice destroys.
[ ] Name the costs that are higher. Institutional fees, tribunal fees, hearing logistics, and advance deposits payable before the work happens. Why. These are borne by the parties rather than by the public. Trap. A three-member tribunal in a matter that did not need one.
[ ] Name the costs that are lower. Disclosure where the protocol was drafted, motion practice, appeal, and the expert education of the fact-finder where qualified arbitrators were appointed. Why. This is where the saving actually is. Trap. Litigation-scale disclosure, which erases all of it.
[ ] Set the timetable expectation at twelve to eighteen months from request to award for a substantial matter under expedited discipline, and two years or more where the tribunal accommodates every extension. Why. There is no docket pressure; the parties and the tribunal supply the discipline or nobody does. Trap. Promising the client a year on a clause with no timetable provision.
[ ] Model the costs allocation. Why. Most institutional regimes let the tribunal award legal costs to the successful party, which differs from the American default and makes a weak claim more expensive to bring and a strong defence more attractive to run. Trap. Running the case on American cost assumptions.
[ ] Consider security for costs early where a claimant's ability to satisfy an adverse award is genuinely doubtful. Trap. Applying at the hearing, when the tribunal will decline.
[ ] Handle third-party funding disclosure. Why. Funding is common in arbitration, applicable rules increasingly require disclosure, and the confidentiality carve-out should already permit disclosure to funders. Trap. A confidentiality clause that makes the funding arrangement itself a breach.
[ ] [Gate] Reforecast after the procedural conference. Why. The disclosure scope, hearing length, and timetable set there determine the actual budget, and the pre-conference estimate was a guess. Trap. A budget fixed before the only meeting that determines it.

[ ] Name a successor for every standing obligation. The template, the decision note, the renewal-cycle push, and the annual audit. Why. Each outlives the person who set it up, and a clause programme with no owner reverts to copying within two years. Trap. A handover listing matters rather than practices.

[ ] Put the clause on the transactional checklist rather than the disputes one. Why. It is drafted by transactional counsel under deal pressure and read by disputes counsel years later, and the only reliable fix is making it a standing item in the negotiation rather than a question raised at signing. Trap. A disputes team that reviews clauses only after a request for arbitration arrives.

[ ] And review it whenever the institution updates its rules. Why. Emergency arbitrator and consolidation provisions frequently apply only where the clause postdates their adoption.

Outcome. A clause whose scope is broad, whose patent coverage is deliberate under 35 U.S.C. § 294, and whose carve-outs preserve interim relief and registry proceedings. An institution chosen on its rules, a seat chosen against the enforcement map, and a tribunal whose qualifications are specified because the appointment cannot be appealed. A disclosure protocol, a confidentiality regime with workable carve-outs, an emergency arbitrator procedure, and a consolidation provision matched across every related agreement. A procedural order proposed rather than received. And an enforcement plan built before the award rather than discovered after it.

The five things people get wrong

Copying the clause. It fixes forum, expertise, confidentiality, disclosure scope, urgent relief, finality, and cross-border enforceability at the moment of least attention in the transaction.

Leaving tribunal qualifications blank. Hall Street and Oxford Health mean a tribunal that misunderstands the technology produces a final award that is simply wrong, and the risk is managed at appointment and nowhere else.

Assuming confidentiality. Arbitration is private, not automatically confidential, and confirmation proceedings are public whatever the clause says.

Choosing the seat for convenience. The seat determines the procedural law and the supervisory court, and it should be chosen against the map of where the counterparty's assets actually are.

Inconsistent clauses across related agreements. They make consolidation impossible and fragment a dispute before anyone reaches the merits.

Key Authorities at a Glance

| Authority | Proposition | |---|---| | 9 U.S.C. § 2 | Validity of arbitration agreements | | 9 U.S.C. § 3 | Stay of proceedings | | 9 U.S.C. § 4 | Order compelling arbitration | | 9 U.S.C. § 7 | Arbitrator summons | | 9 U.S.C. § 9 | Confirmation of awards | | 9 U.S.C. § 10 | Grounds for vacatur | | 9 U.S.C. § 16 | Appeals | | 9 U.S.C. § 201 | New York Convention implementation | | 35 U.S.C. § 294 | Arbitration of patent disputes | | 15 U.S.C. § 1064 | Cancellation | | 15 U.S.C. § 1119 | Court power over registrations | | First Options of Chicago v. Kaplan | Who decides arbitrability | | Rent-A-Center, West v. Jackson | Delegation provisions | | Henry Schein v. Archer & White Sales | No wholly groundless exception | | Buckeye Check Cashing v. Cardegna | Separability | | Howsam v. Dean Witter Reynolds | Procedural questions | | Hall Street Associates v. Mattel | Exclusive vacatur grounds | | Oxford Health Plans v. Sutter | Deference to construction | | Stolt-Nielsen v. AnimalFeeds International | No class arbitration absent consent | | Mitsubishi Motors v. Soler Chrysler-Plymouth | Statutory claims arbitrable | | AT&T Mobility v. Concepcion | Preemption of state obstacles | | Epic Systems v. Lewis | Enforcement as written | | GE Energy Power Conversion France v. Outokumpu | Non-signatories and the Convention | | Badgerow v. Walters | Federal jurisdiction to confirm | | New York Convention | Cross-border enforcement | | WIPO Arbitration and Mediation Center rules | IP-specialised institution | | Institutional arbitration rules | Emergency and expedited procedures |