Managing IP Disputes: Lessons from the Appropriate Dispute Resolution for Tech and IP Event in Singapore

What could go wrong with a licensing agreement?

As the Appropriate Dispute Resolution for Tech and IP in Singapore event showed, a lot.

The event, co-hosted by the Intellectual Property Office of Singapore and the Chartered Institute of Arbitrators during the Singapore Convention Week and IP Week @ Singapore 2025, brought intellectual property (“IP”) experts from around the world to explore the lifecycle of technology and IP disputes. Minister Edwin Tong opened the event with a keynote address, before the audience was taken through a series of role plays and mock hearings centered around a fictional scenario of a Californian company licensing its coffee machine technology to a Chinese company. A panel of industry experts then drew out lessons for how businesses can navigate IP conflicts when armed with the right tools and strategies.

Scene I – Making a Deal: Structuring the Licensing Agreement

The scene opened with a classic scenario: a business seeking to license its top-notch technology to a foreign entity that it has never worked with. How can it protect its interests while maintaining the flexibility necessary to do business? Californian company Brewelle Ltd’s CEO (Edmund Tan, Monsoon Investment), in-house counsel (Yi-Jun Kang, Morrison & Foerster), and external counsel (David Kappos, Cravath Swaine & Moore) discussed some practical solutions. These included, for example, audit rights for licensors to monitor the licensee’s product quality and sales, and an “N-1 tech transfer” strategy, that is, transferring a technology that is one version behind the most recent release, so that the licensor can retain control of its latest innovation while allowing the licensee to benefit from earlier versions.

Instead of negotiating the “midnight clause” at the eleventh hour, Brewelle and its Chinese counterparty Percolatte Inc. addressed the dispute resolution provision upfront. With counsel’s advice, the parties agreed to AAA-ICDR arbitration seated in Singapore, eliminating any risk of home-court advantage while preserving the flexibility to pursue amicable resolution through mediation, and preliminary injunctive relief before both the arbitral tribunal and national courts.

Scene II – Trouble Brewing: Unauthorized Use and Enforcement Challenges and Solutions

Fast forward two years, the once-promising partnership is now strained by an unexpected twist:  Percolatte has set up a subsidiary in Vietnam, which Brewelle suspects is using Brewelle’s technology and trademark without authorization. Brewelle’s CEO wants to act quickly to protect the business’s technology and trademark by restraining the Vietnamese subsidiary. Brewelle’s in-house counsel recommended mediation as a dispute resolution option, noting that the Vietnamese subsidiary was not a party to the arbitration agreement, and at any rate, there are enforceability issues with arbitral awards in Vietnam.

A mediation specialist (Jonathan Choo, Vantage Chambers) and an institutional representative (Caleb Goh, World Intellectual Property Organization Arbitration and Mediation Center (“WIPO AMC”)) explained the advantages of this option. Mediation allows parties to explore settlement options in a confidential, without-prejudice setting with the assistance of a party- or institutional-appointed neutral. Not only does mediation offer businesses the potential to resolve their disputes swiftly, but also institutions like WIPO AMC provide financial support to eligible parties to offset mediator fees and related costs. The enforceability of the settlement agreements reached through mediation has also been bolstered significantly over the years by virtue of the Singapore Convention on Mediation, which allows parties involved in transnational disputes to apply directly to the courts of the ratifying countries to enforce settlement agreements, as well as the SIAC-SIMC Arbitration-Mediation-Arbitration Protocol, a streamlined procedure for parties to initiate arbitration and mediation and record settlement agreements as consent awards enforceable under the New York Convention.

Scene III – Fighting Smart, Financially: Managing Costs and Risks

Disputes often come with a hefty price tag, be it counsel or experts’ fees, institutions’ fees, or the potential exposure. It is therefore unsurprising that Brewelle reached out to experts from the fields of third-party funding and insurance (Tom Glasgow, Omni Bridgeway, and Cathryn Neo, Aon) to discuss how to pursue the case without risking draining the company’s cash reserves.

Mr. Glasgow explained the possibility of providing non-recourse finance to Brewelle in exchange for a share of any successful proceeds, while Ms. Neo shared the availability of after-the-event insurance to help Brewelle manage any adverse costs award, and judgment preservation insurance to shield against the risk of a successful challenge to the award. Both stressed that funding and insurance depend on due diligence and case valuation – a process that Brewelle’s CEO reckoned can provide businesses with a useful “second opinion” on the strength of their case.

Scenes IV and V – Arbitration in Action

After partial resolution of the dispute in mediation, and following Percolatte’s Vietnamese subsidiary’s agreement to join the arbitration, the parties eventually meet in arbitration. Given the confidential nature of arbitration, it is often not possible for non-parties to catch a glimpse of what goes on behind closed doors. Jonathan Choo, Oh Ping-Ping (Bird & Bird) and Sarah Reynolds (Silicon Valley Arbitration & Mediation Center) pulled back the curtain and gave the audience a glimpse into arbitration proceedings by simulating a mock case management conference and an interim injunction application hearing.

During the case management conference, the arbitrator and counsel addressed, among others, evidentiary disclosure and confidentiality orders. Given the nature of IP disputes and the proprietary nature of the information that the parties may seek from each other during disclosure, the arbitrator imposed what is commonly known as an “Attorneys’ and Experts’ Eyes-Only” order, i.e., a confidentiality order restricting access to the parties’ proprietary information to counsel and experts. Such orders, together with Outside Attorneys’ and Experts’ Eyes’ Only orders, are indeed two of the most common types of confidentiality orders that parties often see in IP arbitration proceedings.

The arbitrator then heard Brewelle’s application for an interim injunction to restrain Percolatte’s Vietnamese subsidiary from manufacturing and selling coffee machines in Vietnam using Brewelle’s technology. In their submissions, counsel highlighted some of the key issues in an application for interim injunction, such as the existence of serious questions to be tried, the adequacy of monetary damages (including, in particular, the impact of “first-mover” advantages on the adequacy of money damages), and the balance of convenience.

Curtain Call – An Ovation for Appropriate Dispute Resolution

Following the roleplay, a final panel of experts consisting of moderator Chuan Thye Tan (Rajah & Tann) and panelists Jonathan Choo, Wee Meng Chuan (Singapore International Mediation Centre), Thara Gopalan (American Arbitration Association - International Centre for Dispute Resolution (“ICDR”)), Stanley Lai (Allen & Gledhill), Crystal Tan (Singapore International Commercial Court (“SICC”)), and Lisa Williams (Agoda) discussed how different dispute resolution procedures – alone or in combination – can be used appropriately to achieve businesses’ objectives.

Mr. Choo, for example, highlighted the use case of SIAC’s Streamlined Procedure for lower-value, less-complex disputes. Ms. Tan highlighted the unique advantages of the SICC, including its panel of expert IP judges and its combination of arbitration-like flexibility with the availability of appeals. Mr. Chuan emphasized mediation’s ability to help parties evaluate their relationship and define the path forward, with which Ms. Gopalan concurred, noting that under the ICDR Rules, ICDR makes use of the administrative conference to encourage parties to arbitration agreements to consider mediation. Mr. Lai added that parties may consider leveraging national court proceedings to bring non-parties to arbitration agreements to negotiation or mediation, a challenge which Ms. Williams suggested businesses may preempt by including each other’s affiliates in commercial agreements and dispute resolution clauses. However, as Ms. Williams noted, the practicality of the solution will depend on the specific circumstances of the parties’ commercial relationship.

Final Thoughts

As Minister Edwin Tong reminded participants in his keynote address, dispute resolution is not an end in itself but a means to further business objectives. Singapore’s dispute resolution landscape reflects this mindset, offering multiple options to cater to parties’ needs and circumstances, including mediation, arbitration, and specialized court litigation through the SICC.

The interactive roleplay and insightful panel discussion showcased how businesses can proactively structure agreements, leverage the various dispute resolution options, and utilize financial tools to manage risk and costs. With the right mix of contractual foresight, procedural flexibility, and institutional support, businesses can navigate the complexity of IP conflicts efficiently and effectively.