TRANSCENDING TERRITORIALITY: IN INTELLECTUAL PROPERTY ENFORCEMENT … · 2018-09-22 · intellectual property enforcement and dispute resolution. The article then identifies two general

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TRANSCENDING TERRITORIALITY: INTERNATIONAL COOPERATION AND HARMONIZATION

IN INTELLECTUAL PROPERTY ENFORCEMENT AND DISPUTE RESOLUTION

Alexandra George

Table of Contents

I. INTRODUCTION ...................................................................... 226 II. JURISDICTION-BY-JURISDICTION ACQUISITION &

ENFORCEMENT ............................................................... 229 III. COOPERATION THROUGH INTERNATIONAL TREATIES &

AGREEMENTS ................................................................. 232 A. Intellectual Property Treaties .................................... 234 B. Trade, Investment & Arbitration Agreements .......... 239 C. Private International Law and Intellectual Property:

Jurisdiction, Applicable Law, and Recognition and Enforcement of Foreign Judgments ........................ 247 1. Existing Agreements ........................................... 248 2. Proposals for an International Intellectual Property-

Specific Agreement ........................................... 250 D. Commercial Arbitration: the New York Convention &

UNCITRAL Model Law ......................................... 253 E. Conclusion: Cooperation through Treaties and

Agreements ............................................................. 257 IV. CONSISTENCY THROUGH HARMONIZATION ........................ 257

A. Horizontal Harmonization ........................................ 258 1. Regional Harmonization ..................................... 258 2. Administrative Harmonization ............................ 264

B. Vertical Harmonization ............................................. 268 C. Conclusion: Consistency through Harmonization .... 272

V. THE FUTURE OF INTERNATIONAL COOPERATION & HARMONIZATION IN INTELLECTUAL PROPERTY ENFORCEMENT & DISPUTE RESOLUTION ........................ 272

The author is Director of the LL.M. (Innovation Law) and LL.M. (Media and Technology Law) in the Faculty of Law, University of New South Wales, Australia. Member, China International Business and Economic Law (CIBEL) Initiative, and Member, Allens Hub for Technology, Law and Innovation, UNSW Law.

226 TSINGHUA CHINA LAW REVIEW [Vol. 10:2

TRANSCENDING TERRITORIALITY: INTERNATIONAL COOPERATION AND HARMONIZATION

IN INTELLECTUAL PROPERTY ENFORCEMENT AND DISPUTE RESOLUTION

Alexandra George

Abstract

Intellectual property owners often face difficulties when trying to enforce their rights in cross-border and multi-jurisdictional disputes. Enforcement processes usually need to be litigated jurisdiction-by-jurisdiction, which can be prohibitively complicated and expensive. Chinese investors can find themselves facing unpredictable outcomes if they try to enforce their intellectual property rights abroad, and outcomes may vary dramatically although similar facts are presented in each dispute in different jurisdictions. Similarly, foreign intellectual property holders may face quite diverse litigation environments and outcomes if they wish to enforce their rights in different jurisdictions, e.g. in the European Union (EU), the United States of America (US) and the People’s Republic of China (China). This article examines international steps being taken towards addressing these issues, and it discusses ongoing concerns. Categorizing developments as "cooperative" or "harmonizing", the article first examines cross-border cooperation in intellectual property enforcement and dispute resolution that is found in international treaties. Some agreements are specific to intellectual property law, while others have broader applicability but nonetheless affect the adjudication of intellectual property disputes by domestic courts. Initiatives with respect to the intersection of public international law and intellectual property may resolve many cross-border enforcement difficulties, and the article also considers the use of arbitration to side-step existing problems. The second half of the article examines harmonization. Horizontal and vertical harmonization are being used to streamline laws and administrative processes concerning the acquisition of intellectual property worldwide. This lays foundations from which harmonized enforcement mechanisms may evolve. The article concludes that, in due course, it would not be surprising to see groups of nations develop unitary patents, trademarks and/or designs, and international intellectual property courts through which to enforce them. It would also be unsurprising if – as its own intellectual property system matures,1 and it becomes increasingly dominant in world trade – China were gradually to take a more leading role in shaping the future of cross-border cooperation and harmonization in intellectual property enforcement and dispute resolution.

I. INTRODUCTION Delineated by territorial boundaries and sourced from the national

laws of sovereign states, intellectual property laws have traditionally been constrained by geography. Interconnectedness in cyberspace presents challenges to intellectual property’s territorial underpinnings, as does interconnectedness in international commerce. This article examines problems faced by Chinese and foreign intellectual property

1 For historical perspectives on the development of China’s intellectual property system and its engagement with the international intellectual property system, see Peter K. Yu, The Middle Kingdom and the Intellectual Property World, 13 OR. REV. INT'L L. 209–62 (2011). Jennifer Wai-Shing Maguire, Progressive IP Reform in the Middle Kingdom: An Overview of the Past, Present, and Future of Chinese Intellectual Property Law, 46 INT’L L. 893–912 (2012). Natalie P. Stoianoff, The Influence of the WTO over China’s Intellectual Property Regime, 34 SYDNEY L. REV. 65–90 (2012).

2018] CROSS-BORDER IP ENFORCEMENT & DISPUTE RESOLUTION 227

holders alike when trying to enforce their rights across jurisdictional borders. It examines existing measures that smooth cross-border acquisition and enforcement in a world in which technology and globalization are challenging the geographical boundaries that lie at the heart of intellectual property laws, and it suggests areas in which existing legal structures could be extended to simplify cross-border enforcement.

Under the principle of territoriality, national intellectual property laws give rise to intellectual property rights that are enforceable within a nation’s territorial boundaries. This creates a situation in which registered rights, such as patents, designs and trademarks, need to be formally recorded in each jurisdiction in which they are to be protected. Even when intellectual property rights come about automatically and without formal registration requirements, 2 they must be dealt with and protected separately in each jurisdiction.

It can be complicated, expensive and inefficient to register (or otherwise acquire) the same intellectual property interests in multiple jurisdictions, and to litigate the same dispute in each jurisdiction. The costs and complexity of battling multifaceted intellectual property disputes through the courts of each jurisdiction in which rights are being enforced can be prohibitive. The Apple v. Samsung disputes provide a good illustration. In 2012, the giant technology companies Apple and Samsung were fighting over fifty patents and/or design cases on similar issues in ten separate countries (Australia, Britain, France, Germany, Italy, Japan, the Netherlands, South Korea, Spain, and the US), at enormous expense.3

Issues of access to justice are raised when only the wealthiest businesses are likely to be able to afford such litigation. It is also questionable whether territorially-based intellectual property laws work effectively in an increasingly globalized and interconnected world in which the law’s jurisdictional boundaries can seem mismatched with the way in which communication and commerce are evolving. 4 With the arrival of the Fourth Industrial Revolution’s "internet of things" and creativity by Artificial Intelligence (AI) – both of which can transcend nationality and territorial limits – demand for easier, more efficient trans-jurisdictional protection of intellectual property interests is only likely to increase.

Developments in cross-border intellectual property protection and enforcement suggest practical solutions are gradually being found to 2 Such as copyright and passing off, and designs in some jurisdictions. 3 Florian Mueller, List of 50+ Apple-Samsung Lawsuits in 10 Countries, FOSS PATENTS (2012), http://www.fosspatents.com/2012/04/list-of-50-apple-samsung-lawsuits-in-10.html. See also Florian Mueller, Apple vs. Samsung: List of All 19 Lawsuits Going on in 12 Courts in 9 Countries on 4 Continents FOSS PATENTS (2011), http://www.fosspatents.com/2011/08/apple-vs-samsung-list-of-all-19.html. 4 Sheldon W. Halpern & Phillip Johnson, Harmonising Copyright Law and Dealing with Dissonance: A Framework for Convergence of US and EU law 3 (2014).


circumvent the limitations imposed on rights-holders by geographically-based intellectual property jurisdiction. Some of these trends are extensions and developments of existing laws; other measures seem almost designed to thwart gaps in legal protection. While not supplanting traditional enforcement mechanisms, these trends are extending and enhancing protection for intellectual property owners who seek to defend their rights in the context of cross-border communications and trade.

This article outlines difficulties involved in applying traditional international enforcement options in the contemporary environment, and it considers trends in trans-border intellectual property enforcement. Part II outlines the basic jurisdiction-by-jurisdiction approach to trans-border acquisition of intellectual property and the gaps it leaves for those trying to enforce their rights across national boundaries. It summarizes the many practical challenges that can stand in the way of enforcement in cross-border or multi-jurisdictional disputes. Where relevant, this article takes particular note of China’s approach to resolving structural problems around cross-border intellectual property enforcement and dispute resolution.

The article then identifies two general trends in the ways in which the international intellectual property community is responding to these difficulties, first, through cooperation and, second, through harmonization of intellectual property laws and administrative practices. Part III discusses how international treaties have modified the basic approach, engendering cooperation between nations with respect to the acquisition of intellectual property. While these agreements have greatly increased the ease by which intellectual property can be obtained in another jurisdiction, they do relatively little to assist intellectual property owners who seek to enforce their rights across borders. Part IV analyses efforts to smooth intellectual property acquisition and/or enforcement through harmonization of national laws and administrative practices. Identifying two main patterns of harmonization – which may be characterized as "horizontal" and "vertical" – the article examines the ways in which the trend towards increasing harmonization of intellectual property laws and practices can assist those who seek to enforce their rights in trans-border disputes.

The article concludes that – particularly through collaborative mechanisms for obtaining intellectual property outside a person’s home jurisdiction – foundations have been laid upon which more widespread, comprehensive and streamlined arrangements could be put in place to enable easier cross-jurisdictional enforcement of the rights that attach to that property. There is already a diverse range of precedents for this. It suggests that, while public international law provisions continue to construct the legal conditions in which cross-


border intellectual property rights can be obtained, the future of international intellectual property enforcement increasingly also invokes administrative measures and aspects of private international intellectual property law. It also suggests that China is likely to play an increasingly prominent role in this future.

II. JURISDICTION-BY-JURISDICTION ACQUISITION & ENFORCEMENT Given the territorial nature of intellectual property laws, the surest

way for a creator to obtain intellectual property protection beyond its home jurisdiction has traditionally been to systematically seek registration or recognition of rights in each overseas jurisdiction in which it might intend to assert ownership over the material. For example, if a Chinese investor wishes to protect its investment through patent law in the US, the EU and Australia, it would need to seek registration under the domestic laws of each of these jurisdictions. The property and rights obtained in each jurisdiction are independent of those in each other jurisdiction, and each must be enforced separately. Thus, if a Chinese patent holding company discovered its registered rights were being infringed by a competitor in the US, the EU and Australia, it would expect to have to litigate separately in each of those jurisdictions in order to enforce its rights. The territoriality principle has traditionally been taken to mean that each country has jurisdiction with respect to adjudicating intellectual property disputes, and no state should interfere in the legal affairs of other sovereign states.5

With respect to registered intellectual property interests – patents for inventions, trademarks for brands, and/or designs for the appearance of objects – the most straightforward way in which a person or business could traditionally gain international protection was to register in each jurisdiction in which protection was desired. However, this jurisdiction-by-jurisdiction approach is a time-consuming and expensive strategy that typically involves the retaining of local patent and/or trademark attorneys and/or lawyers to prosecute applications through local registries. But for benefits provided by grace periods in some countries, and recognition of foreign priority dates under treaty provisions, the registration of an equivalent patent or design in a second country would also face existential difficulties in jurisdictions that apply international novelty standards that take into account prior art anywhere in the world.

In times past, registration was also a method of obtaining copyright protection in some jurisdictions. 6 In jurisdictions not requiring 5 See, e.g., BENEDETTA UBERTAZZI, EXCLUSIVE JURISDICTION IN INTELLECTUAL PROPERTY 37, 138 (2012). See also Graeme B. Dinwoodie, Developing a Private International Intellectual Property Law: The Demise of Territoriality? 51 WM. & MARY L. REV. 711–800 (2009). 6 For a discussion of copyright registration requirements in the US prior to 1989, see Rita Marie Cain, Timing Is Everything: Copyright Registration and Preregistration, 88 J. PAT. & TRADEMARK OFF. SOC’Y


registration, an author would usually demonstrate a "connecting factor" (usually citizenship or residency) to the jurisdiction in question in order to obtain copyright. Another way of obtaining the requisite connection has been to publish the work in the jurisdiction in which protection is sought, and "first publication" of a work in a foreign jurisdiction has traditionally been a common method of obtaining copyright abroad. While with less administratively burdensome than seeking registered rights abroad, the downside of copyright subsistence arising automatically if certain pre-conditions are met is that it leaves putative rights-holders unsure of the existence and scope of their property until they seek to enforce their interests through the courts, and outcomes may vary case-by-case.

Once intellectual property has been obtained in the foreign jurisdiction, legally it can also be enforced there.7 However, various limitations and complications can make this problematic in practice. In a case involving allegations of trans-border infringements, which court has jurisdiction? Which jurisdiction’s law applies? Then there are pragmatic considerations: not all jurisdictions have predictable, well-functioning, uncorrupt legal systems in which litigants can be confident of receiving a fair trial. Concerns about receiving a fair trial may sometimes be compounded when the plaintiff is a foreigner.

China’s conflict of laws system has been described as “partially modernized”.8 The Law of the Application of Law for Foreign-related Civil Relations of the People’s Republic of China 2010 entered into force in 2011, introducing general rules and several provisions relating specifically to intellectual property law.9 The ownership and content of intellectual property are governed by the law in force in the jurisdiction where protection is sought.10 However, this law has been

381–91 (2006). David Nimmer, The Impact of Berne on United States Copyright Law, 8 CARDOZO ARTS & ENT. L.J. 27–46 (1989). Christopher Sprigman, Reform(aliz)ing Copyright, 57 STAN. L. REV. 485–568 (2004). Stephen J. Strauss, Don’t Be Burned by Berne: A Guide to the Changes in the Copyright Laws as a Result of the Berne Convention Implementation Act of 1988, 71 J. PAT. & TRADEMARK OFF. SOC’Y 374–84 (1989). 7 This article does not consider normative arguments for or against particular intellectual property or its rights. Instead, discussion is confined to the enforcement of rights that have already been provided for in national legislation. 8 Jie (Jeanne) Huang, The Partially Modernized Chinese Conflicts System: Achievements and Challenges, 13 J. PRIV. INT'L L. 633–54 (2017), https://doi.org/10.1080/17441048.2017.1380958 (last visited Mar. 18, 2018). 9 Xiaoliang Fan, Analysis of the Intellectual Property Rights Terms in Chinese Private International Law: on the Perspective of the Latest Regulations, 5 INT'L J. PRIV. L. 303–21 (2012). See also Zhengxin Huo, An Imperfect Improvement: The New Conflict of Laws Act of the People’s Republic of China Current Developments: Private International Law, 60 INT’L & COMP. L.Q. 1065–94 (2011). 10 ZHENG SOPHIA TANG, YONGPING XIAO & ZHENGXIN HUO, CONFLICT OF LAWS IN THE PEOPLE’S REPUBLIC OF CHINA 328 (2016). Chapter 12 of this book provides a detailed analysis of Choice of Law principles in intellectual property cases in China.


described as “far from comprehensive”, 11 and leaving need for a “more detailed judicial interpretation… to facilitate the smooth implementation” of the law in practice. 12 Meanwhile, Chinese intellectual property holders may face a variety of different conflict of laws principles when seeking to enforce their rights in different countries abroad.

Even if a fair trial can be expected in a jurisdiction, the rights might not give rise to remedies in the jurisdiction that terminate and/or compensate for infringement that has occurred. Even if a court orders remedies that would, in theory, produce the desired results, it might be difficult or impossible to enforce orders for damages and/or other remedies. For example, on-the-ground enforcement of a judgment might be difficult in a jurisdiction beset with venality, or when assets are hidden and/or beyond reach. If there are no assets in that jurisdiction, would it be possible to have a foreign judgment enforced abroad? Whether or not a foreign judgment will be recognized and enforced by a Chinese court first depends upon whether China has concluded or acceded to an agreement with the foreign court’s government. 13 If not, the decision is left to the Chinese People’s Court.14

Even if the legal system of one jurisdiction functions well and produces effective and worthwhile remedies for the plaintiff, parallel actions may need to be taken in other jurisdictions to seek remedies to the infringing conduct. In such circumstances, there is no guarantee that the courts of different jurisdictions will reach the same findings of fact or law if equivalent litigation needs to be conducted to protect one’s intellectual property in multiple jurisdictions. Despite identical or similar facts, the findings of courts in different jurisdictions may be quite diverse. Difficulties with respect to predictability, coherence and diverging outcomes can inhibit cross-border enforcement of intellectual property rights, and these factors are often claimed to act as a disincentive to engage in trade with nations in which strong,

11 Id. at 323. 12 Id. 13 Fan, supra note 9. 14 Id.


consistent intellectual protection may not be available. 15 Various approaches have been taken to address this problem.16

III. COOPERATION THROUGH INTERNATIONAL TREATIES & AGREEMENTS

In response to the sorts of concerns outlined in Part II, international intellectual property treaties and practices have been developed over several hundred years to give overseas recognition to nationally-based 15 It should be emphasized that this viewpoint is contested by those who argue against the expansion of intellectual property laws, and also by those who argue that intellectual property enforcement does not necessarily assist developing nations. A summary of the literature can be found in Llewellyn Joseph Gibbons, Do as I Say (Not as I Did): Putative Intellectual Property Lessons for Emerging Economies from the Not So Long Past of the Developed Nations, 64 S.M.U. L. REV. 923–74 (2011). For examples of literature arguing that weak intellectual property regimes act as a disincentive to trade and investment, see, e.g., Neal Solomon, Transformation of the American Patent System: 2006 to 2016 (2016), http://www.ipwatchdog.com/wp-content/uploads/2017/02/Transformation-of-the-American-Patent-System-1.pdf (arguing that weaken the US patent system has led to declining business investment and declining in productivity); UNITED STATES TRADE REPRESENTATIVE, 2016 REPORT TO CONGRESS ON CHINA’S WTO COMPLIANCE (2017), https://ustr.gov/sites/default/files/2016-China-Report-to-Congress.pdf (stating at page 102 that investors have voiced concerns about inconsistent enforcement of laws and regulations, and weak protection of intellectual property rights); JAMES ANDREW LEWIS, INTELLECTUAL PROPERTY PROTECTION: PROMOTING INNOVATION IN A GLOBAL INFORMATION ECONOMY (2008) (stating that “a growing realization exists in Beijing and elsewhere that weak IP protection is a disincentive to innovation by the Chinese themselves” at page 34). For a summary of literature addressing weak intellectual property regimes as a disincentive to trade and investment, see UNITED STATES INTERNATIONAL TRADE COMMISSION, CHINA: EFFECTS OF INTELLECTUAL PROPERTY INFRINGEMENT AND INDIGENOUS INNOVATION POLICIES ON THE U.S. ECONOMY (2015). Footnotes on page 6–10. 16 This article focuses on enforcement of civil intellectual property laws. However, there has also been law-making and cross-border activity in the field of criminal law enforcement. Many countries now have criminal offences relating to intentional, commercial intellectual property infringement. With respect to enforcement, an example of new approaches to enforcement is found in the US, where courts have been involved in requests to extradite foreign nationals (some of whom have never been to the US) to the US to face trial for criminal copyright and related conspiracy offences: Hew Raymond Griffiths was extradited from Australia in 2007 and was sentenced to 51 months in US prison: United States of America v Griffiths, [2004] FCA 879 (Austl.), http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCA/2004/879.html?context=1;query=Griffiths%20v%20United%20States%20of%20America%20;mask_path=. Griffiths v United States of America, [2005] FCAFC 34 (Austl.), http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCAFC/2005/34.html. Richard O’Dwyer avoided extradition from Britain through a last-minute plea bargain with US authorities in late 2012: The Government of the United States of America v Richard O’Dwyer (2012), https://www.judiciary.gov.uk/wp-content/uploads/JCO/Documents/Judgments/us-v-odwyer-ruling.pdf. theguardian.com-Richard ODwyers two-year extradition ordeal ends in New York.pdf, . Kim Dotcom is fighting extradition from New Zealand: United States of America v Kim Dotcom et al, Crim. No. 1:12CR3 (2012), http://www.washingtonpost.com/wp-srv/business/documents/ megaupload_indictment.pdf. Artem Vaulin is fighting extradition from Poland: Eriq Gardner, Judge Rules KickassTorrents Founder Properly Charged With Criminal Copyright Conspiracy, THE HOLLYWOOD REP., 2017, https://www.hollywoodreporter.com/thr-esq/judge-rules-kickasstorrents-founder-properly-charged-criminal-copyright-conspiracy-1026890. Cyrus Farivar, Microsoft, DOJ Set to Go Head to Head at Supreme Court in 2018, ARS TECHNICA (Jan. 1, 2018), https://arstechnica.com/tech-policy/2018/01/microsoft-doj-set-to-go-head-to-head-at-supreme-court-in-2018/.


intellectual property and to make it possible for nationals of one jurisdiction to acquire intellectual property and enforce their rights in another jurisdiction. These treaties formalize cooperation between the legal systems of various jurisdictions, making it easier to obtain intellectual property interests abroad. They also address issues such as cooperation between national border authorities, which assists with enforcement of intellectual property rights in cases involving copyright piracy and/or counterfeiting of trademarked goods. However, these arrangements tend to make little practical difference to the enforcement difficulties outlined in Part II.

Numerous treaties address issues of intellectual property recognition by non-nationals, whether through formal registration of property interests, or by automatic copyright subsistence or recognition of unregistered trademarks. These agreements range from bilateral trade or investment treaties that include intellectual property clauses, to comprehensive multilateral treaties covering multiple areas of intellectual property law. Whatever their nature, such agreements typically adopt "national treatment" principles that entitle persons from one jurisdiction to obtain intellectual property rights in other jurisdictions. It is also common for the treaties to incorporate the principle of "priority rights", which enable patents, designs and trademarks registered in one jurisdiction to be recognized and used as the basis for applications in other jurisdictions within a specified period. Flowing from these methods of obtaining intellectual property in foreign jurisdictions, the holder of such rights also obtains the legal ability to enforce them within those jurisdictions. As such, the legal ability to enforce one’s rights is a simple corollary to intellectual property ownership. Enforcement through national courts in cross-jurisdictional cases also tends to be regarded as a concern of private international intellectual property law or "conflict of laws", a notionally domestic issue.17 Perhaps these reasons help to explain why little additional attention is paid to enforcement issues in the treaties.

17 For discussions about the dichotomizing of law into domestic/international, and the dichotomizing of international law into public/private, see Christopher A. Whytock, Thinking beyond the Domestic-International Divide: Toward a Unified Concept of Public Law, 36 GEO. J. INT’L L. 155–94 (2004). Camilla Capucio, National Judges and Courts as Institutions for Global Economic Governance, 12 BRAZ. J. INT’L L. 356–70 (2015). Christopher A. Whytock, Domestic Courts and Global Governance Institutions and the Rule of Law: A New Voices Panel, 101 AM. SOC’Y INT’L L. PROC. 166–70 (2007). Ralf Michaels & Joost Paulwelyn, Conflict of Norms or Conflict of Laws: Different Techniques in the Fragmentation of Public International Law Symposium: International Law and Global Public Goods, 22 DUKE J. COMP. & INT’L L. 349–76 (2011). In the context of intellectual property law, Graeme Dinwoodie has suggested use of the term"public private international law" to address this issue: Graeme B. Dinwoodie, The Architecture of the International Intellectual Property System Symposium on Constructing International Intellectual Property Law: The Role of National Courts, 77 CHI.-KENT L. REV. 993, 1010 (2001). The term was earlier coined by Stephen B. Burbank, Jurisdictional Equilibration, the Proposed Hague Convention and Progress in National Law, 49 AM. J. COMP. L. 203, 204 (2001).


This part of the article outlines key intellectual property treaties, all of which China is a signatory to, and it points to gaps that those treaties leave for those seeking international enforcement of intellectual property rights. It concludes that existing intellectual property treaties tend to be inadequate to meet the contemporary needs of creators and businesses wishing to enforce their intellectual property interests across international boundaries.

A. Intellectual Property Treaties Since the late 19th Century, international treaties have created

frameworks by which countries agree to measures that effectively transcend geographical limitations of intellectual property laws.

Articles 2 and 3 of the Paris Convention 188318 provide for its 177 Member States (including China) 19 to treat the nationals of other members as they treat their own with respect to patent, design, and trademark law.20 Article 4 requires a right of priority. 21 Together, these provisions result in nationals of one contracting state being able to register and enforce intellectual property interests in other contracting states. In addition to the Paris Convention, the World Intellectual Property Organization (WIPO) administers inter alia the Madrid system (trademarks),22 the Hague system (designs),23 and the 18 PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY (1883), http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=288514 [hereinafter Paris Convention]. 19 China acceded to the Paris Convention on 19 December 1984, and the treaty entered into force in China on 19 March 1985. WIPO, TREATIES AND CONTRACTING PARTIES: PARIS CONVENTION (CHINA), http://www.wipo.int/treaties/en/remarks.jsp (last visited Apr. 29, 2018). 20 For discussions of this principle, see Christopher Heath & Anselm Kamperman Sanders, National Treatment under the Paris Convention in THE PRINCIPLE OF NATIONAL TREATMENT IN INTERNATIONAL ECONOMIC LAW: TRADE, INVESTMENT AND INTELLECTUAL PROPERTY 223–47 (2014), https://www.elgaronline.com/view/9781783471218.00019.xml (last visited Apr. 29, 2018). ANSELM KAMPERMAN SANDERS, THE PRINCIPLE OF NATIONAL TREATMENT IN INTERNATIONAL ECONOMIC LAW: TRADE, INVESTMENT AND INTELLECTUAL PROPERTY (2014). Robert Brauneis, National Treatment in Copyright and Related Rights: How Much Work Does it Do? (Geo. Wash. U. Legal Stud. Res. Paper 2013-103, 2013). Magdalena Slok-Wodkowska, National Treatment Rules in EU Regional Trade Agreements, 34 POLISH Y.B. INT’L L. 225–48 (2014). 21 Article 4(1) states: “Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.” Paris Convention, supra note 18. 22 The Madrid System for the International Registration of Marks (http://www.wipo.int/madrid/en/) comprises the 110 contracting parties (116 countries in total: http://www.wipo.int/madrid/en/members/) to the MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS (1891), http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=283530 and the PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS (1989), http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=283484. 23 There are currently 67 contracting parties to the HAGUE AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS (1925), http://www.wipo.int/wipolex/en/details.jsp?id=12526. The Hague Agreement creates the Hague International Design System, which enables an applicant to register multiple designs in multiple


Patent Cooperation Treaty 1970,24 each of which provides unified procedures for seeking simultaneous registration of intellectual property rights in multiple signatory jurisdictions. Of these, China is a party to the Madrid System25 and the Patent Cooperation Treaty.26

These treaties standardize aspects of the laws of various nations and make it easier to obtain intellectual property abroad, but they do little to overcome the problems with cross-border enforcement outlined in Part II above. For example, if a Chinese company that registered its patent in Australia, Germany, India and the United States wanted to enforce those patents against a multi-national entity that it alleged was infringing in all those jurisdictions, the rights-holding company would have to pursue litigation through the courts of Australia, Germany, India and the United States separately. In each case, it would need to litigate under the domestic patent laws of the jurisdiction in question, and there would be no guarantee of uniform outcomes. While enforcement of foreign judgments is a possibility, it will be seen later in this article27 that this process is also unpredictable and fraught with difficulties. Even if enforcement of a foreign judgment could be achieved – thus avoiding the need for a full trial in the jurisdiction that enforces the foreign judgment – it would nonetheless have been necessary to litigate in multiple jurisdictions to achieve this outcome.

WIPO’s Berne Convention 188628 covers copyright and related rights, and its Article 5(1) provides that nationals of any of its 175 Member States (including China)29 can use the laws of other Member States to protect their copyright.30 Rather than using a registration approach, the Berne Convention requires that copyright automatically contracting parties with a single application: http://www.wipo.int/hague/en/ For references to associated legal texts. See also http://www.wipo.int/hague/en/legal_texts/ 24 The PATENT COOPERATION TREATY (1970), http://www.wipo.int/wipolex/en/details.jsp?id=12635. has 152 contracting parties: http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=6. This agreement provides for nationals of a PCT contracting state to file simultaneous patent applications in other contracting states with a single process. 25 China acceded to the Madrid System on 4 July 1989, and the treaty entered into force in China on 4 October 1989. WIPO, TREATIES AND CONTRACTING PARTIES: MADRID AGREEMENT (CHINA), http://www.wipo.int/treaties/en/remarks.jsp (last visited Apr. 29, 2018). 26 China acceded to the Patent Cooperation Treaty on 1 October 1993, and the treaty entered into force in China on 1 January 1994. WIPO, TREATIES AND CONTRACTING PARTIES: PATENT COOPERATION TREATY (CHINA), http://www.wipo.int/treaties/en/remarks.jsp (last visited Apr 29, 2018). 27 See Part III.C below. 28 BERNE CONVENTION FOR THE PROTECTION OF LITERARY AND ARTISTIC WORKS, (1886), http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=283698 [hereinafter Berne Convention]. 29 China acceded to the Berne Convention on 10 July 1992, and it entered into force on 15 October 1992. WIPO, TREATIES AND CONTRACTING PARTIES: BERNE CONVENTION (CHINA), http://www.wipo.int/treaties/en/remarks.jsp (last visited Apr. 29, 2018). 30 Article 5(1) states: “Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.” Berne Convention, supra note 28.


subsist in Member States once certain prerequisites have been met. With respect to cross-border interests in copyright, the Berne Convention requires a state to afford the nationals of treaty-partners the same advantages and protection under the law that it provides to its own nationals. This means that nationals of one Berne Convention Member State receive the same copyright protection in each other Berne Convention Member State as locals receive. For example, Australia and China are both Berne Convention members. Therefore, the works of an Australian author would receive the same copyright protection in China as would the works of a Chinese author, and the Australian author could litigate in the Chinese courts to enforce Chinese copyright law against Chinese nationals or others within China. A Chinese author would likewise enjoy reciprocal privileges in Australia. However, in a world in which an estimated 3.6 billion people are connected to the internet,31 over which digitized versions of copyright-protected text, music, movies, software, and so on, can be transferred nearly instantaneously, to seemingly infinite recipients globally, and at a negligible cost, an author wanting to enforce its copyright might face the prospect of separate legal actions in multiple countries. In a vast majority of situations, cost and practical considerations would make this unrealistic.

Observance of the Paris and Berne Conventions was greatly expanded in the mid-1990s with the institution of the World Trade Organization (WTO). The WTO requires all Member States (including China)32 to comply with its Agreement on Trade Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement).33 The TRIPS Agreement sets out minimum standards of intellectual property protection that all Member States are required to implement in their domestic laws. Under Article 9(1) of the TRIPS Agreement, all members must comply with Articles 1 through 21 of the Berne Convention (1971 text) and, under Article 2, all members must comply with Articles 1-12 and 19 of the Paris Convention.34 The principle of national treatment is also found in Article 3 of the TRIPS Agreement.35 The cumulative effect has been to entrench minimum standards of

31 ITU, STATISTICS - GLOBAL ICT DEVELOPMENTS (2018), https://www.itu.int/en/ITU-D/Statistics/Pages/stat/default.aspx. 32 China joined the World Trade Organization on 11 December 2001. WTO, WTO | ACCESSIONS: CHINA, https://www.wto.org/english/thewto_e/acc_e/a1_chine_e.htm (last visited Apr. 29, 2018). 33 AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS, (1994), http://www.wipo.int/wipolex/en/other_treaties/text.jsp?file_id=305907 [hereinafter TRIPS Agreement]. 34 Article 2(1) states: “In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967).” Id. 35 Article 3 states: “Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property…” Id.


legally mandated intellectual property protection throughout much of the world.

At the time of writing, 164 nations are members of the WTO.36 While the number of sovereign states on earth is contested, the United Nations recognizes 193 Member States.37 On this figure, around 85% of sovereign states are now members of the TRIPS Agreement. In practice, this means that over 90% of nations are required to offer copyright protection in their territories to authors and copyright owners based in other Berne Convention/WTO Member States. Nationals of over 91% of states can apply to have their patents, trademarks and designs recognized in other nations. In these ways, it has never been easier for creators and businesses to obtain intellectual property beyond their home jurisdiction.

Equivalent ease in enforcing intellectual property rights has not followed. The TRIPS Agreement does contain enforcement provisions, 38 some of which seem directly intended to overcome difficulties outlined above. For example, Article 41 states: “Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.” 39 However, this is vague, and assessments concerning what are "fair", "equitable" and "unnecessarily complicated or costly" are very subjective.40

The TRIPS Agreement also contains a provision addressing international cooperation. However, this deals with the prevention of trade in infringing goods across jurisdictional boundaries, 41 rather 36 World Trade Organization, UNDERSTANDING THE WTO: THE ORGANIZATION - MEMBERS AND OBSERVERS (2016), https://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm. 37 The United Nations (UN) recognizes 193 Member States: http://www.un.org/en/member-states/index.html. By contrast, the U.S. Department of State recognizes 195 independent states: https://www.state.gov/s/inr/rls/4250.htm, and the International Olympic Committee recognizes 206 National Olympic Committees: https://www.olympic.org/national-olympic-committees. 38Part III is entitled "Enforcement of Intellectual Property Rights". TRIPS Agreement, supra note 33. 39 Id. 40 Peter Yu argues that developing countries sought such terminology when bargaining towards the TRIPS Agreement, and “the failure of the TRIPS Agreement to induce less developed countries to offer effective protection and enforcement of intellectual property right has become costly and highly troublesome.” Peter K. Yu, The Non-Multilateral Approach to International Intellectual Property Normsetting in INTERNATIONAL INTELLECTUAL PROPERTY: A HANDBOOK OF CONTEMPORARY RESEARCH 83, 84 (Daniel J. Gervais ed., 2015). For general discussion and criticisms of enforcement provisions under the TRIPS Agreement, see J. H. Reichman & David Lange, Bargaining around the Trips Agreement: The Case for Ongoing Public-Private Initiatives to Facilitate Worldwide Intellectual Property Transactions, 9 DUKE J. COMP. & INT’L L. 11–68 (1998). Peter K. Yu, TRIPs and Its Achilles’ Heel, 18 J. INTELL. PROP. L. 479–531 (2011). 41Article 69: “Members agree to cooperate with each other with a view to eliminating international trade in goods infringing intellectual property rights. For this purpose, they shall establish and notify contact points in their administrations and be ready to exchange information on trade in infringing goods. They shall, in particular, promote the exchange of information and cooperation between customs authorities with regard to trade in counterfeit trademark goods and pirated copyright goods.” TRIPS Agreement, supra note 33.


than making it easier to enforce intellectual property rights abroad or in several jurisdictions simultaneously through a unified process. The TRIPS Agreement therefore did relatively little to combat the sorts of difficulties outlined in Part II that intellectual property owners can encounter when seeking to enforce their rights trans-jurisdictionally.42

Other multilateral treaties have been concluded. However, these tend to address specific issues, creating additional areas of intellectual property, such as the 2012 Beijing Treaty on Audiovisual Performances43 (which is not yet in force), or carving out exceptions for use of existing property, such as the 2013 Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.44 They do not address the enforcement difficulties outlined in Part II above. The Director General of WIPO, Francis Gurry, has predicted that further large multi-issue intellectual property treaties are likely to be difficult to achieve,45 and this forecast seems to be supported by the recent history of the Anti-Counterfeiting Trade Agreement (ACTA)46 and the Trans Pacific Partnership Agreement (TPP), 47 both of which reached advanced stages of negotiation and were signed by many parties, or even ratified,48 but failed to enter into force.49 Gurry suggests that 42 Yu, supra note 40. 43 BEIJING TREATY ON AUDIOVISUAL PERFORMANCES (2012), http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=295838. 44 MARRAKESH TREATY TO FACILITATE ACCESS TO PUBLISHED WORKS FOR PERSONS WHO ARE BLIND, VISUALLY IMPAIRED OR OTHERWISE PRINT DISABLED (2013), http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=301019. 45 Francis Gurry, RE-THINKING THE ROLE OF INTELLECTUAL PROPERTY (2013), http://www.wipo.int/export/sites/www/about-wipo/en/dgo/speeches/pdf/dg_speech_melbourne_2013.pdf. 46 See generally Susan K. Sell, TRIPs Was Never Enough: Vertical Forum Shifting, FTAS, ACTA, and TPP, 18 J. INTELL. PROP. L. 447–78 (2010). Kimberlee Weatherall, ACTA as a New Kind of International IP Lawmaking, 26 AM. U. INT’L L. REV. 839–902 (2010). Charles R. McManis, The Proposed Anti-Counterfeiting Trade Agreement (ACTA): Two Tales of a Treaty Intellectual Property in International Perspective, 46 HOUS. L. REV. 1235–56 (2009). Margot E. Kaminski, The U.S. Trade Representative’s Democracy Problem: The Anti-Counterfeiting Trade Agreement (ACTA) as a Juncture for International Lawmaking in the United States, 35 SUFFOLK TRANSNAT’L L. REV. 519–52 (2012). Tsai-fang Chen, The Implications of the ACTA for Asia’s Plurilateral Trade Agreements regarding the Enforcement of Intellectual Property Rights, 8 ASIAN J. WTO & INT’L HEALTH L & POL’Y 507–20 (2013). 47 See generally Kelly Hughes, Trans(Parency) Pacific Partnership: The Downfall of the TPP, 15 J. ON TELECOMM. & HIGH TECH. L. 487–516 (2016). To TPP or Not to TPP: Should the U.S. Join the Trans-Pacific Partnership and Other International Trade Agreements, 16 J. INT’L BUS. & L. 52–74 (2016). Junji Nakagawa, TPP-11 as a Means to Revive the TPP after U.S.’ Withdrawal Special Issue: Trump’s Trade Policy: Assessment of Trump’s Policy on FTAs, 12 ASIAN J. WTO & INT’L HEALTH L & POL’Y 405–20 (2017). Peter K. Yu, The investment-related aspects of intellectual property rights, 66 AM. U. L. REV. 829–910 (2017). 48 Japan ratified the TPP: Kaori Kaneko & Yoshifumi Takemoto, Japan Ratifies TPP Trade Pact to Fly the Flag for Free Trade, REUTERS (Dec. 9, 2016), https://www.reuters.com/article/us-japan-tpp/japan-ratifies-tpp-trade-pact-to-fly-the-flag-for-free-trade-idUSKBN13Y0CU. 49 Note that an alternative to the TPP, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP, alternatively TPP11 or TPP2.0), was signed on 8 March 2018 by Australia, Brunei,


success in concluding recent intellectual property treaties has been more likely to occur if they “dealt with specific and technical problems that were negotiated on their own merits and without making connections to interests in the wider IP or multilateral agenda”. 50 Perhaps there is scope for a narrower treaty dealing specifically with private international law aspects of intellectual property to be concluded in the future.51

B. Trade, Investment & Arbitration Agreements In addition to worldwide multilateral treaties such as the Paris

Convention, Berne Convention and TRIPS Agreement, many trade and/or investment agreements include intellectual property chapters that require parties to implement agreed minimum standards of protection.

These agreements may be multilateral, such as the trilateral North American Free Trade Agreement (NAFTA) between Canada, the United States and Mexico, which entered into force in 1994.52 Chapter 17 of NAFTA concerns intellectual property issues, including clauses relating to national treatment53 and enforcement. 54 While NAFTA attempts to address some of the aforementioned difficulties that cross-border enforcement can invoke, 55 some of its requirements are Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore and Vietnam. See NEW ZEALAND MINISTRY OF FOREIGN AFFAIRS AND TRADE, COMPREHENSIVE AND PROGRESSIVE AGREEMENT FOR TRANS-PACIFIC PARTNERSHIP TEXT (2016), https://www.mfat.govt.nz/en/trade/free-trade-agreements/free-trade-agreements-concluded-but-not-in-force/cptpp/comprehensive-and-progressive-agreement-for-trans-pacific-partnership-text/ (last visited Apr. 29, 2018). The only member of the original TPP that did not sign it was the United States. The CPTPP contained many provisions of the original TPP, but omitted some that were opposed by members other than the United States. See also The Associated Press, 11 Nations to Sign Pacific Trade Pact as US Plans Tariffs, N.Y. DAILY NEWS, Mar. 8, 2018, http://www.nydailynews.com/newswires/news/business/11-nations-sign-pacific-trade-pact-plans-tariffs-article-1.3863220 (last visited Apr. 29, 2018). Colin Dwyer, The TPP Is Dead. Long Live The Trans-Pacific Trade Deal, NPR.ORG (Mar. 8, 2018), https://www.npr.org/sections/thetwo-way/2018/03/08/591549744/the-tpp-is-dead-long-live-the-trans-pacific-trade-deal (last visited Apr. 29, 2018). Zachary Torrey, TPP 2.0: The Deal Without the US, THE DIPLOMAT, Feb. 3, 2018, https://thediplomat.com/2018/02/tpp-2-0-the-deal-without-the-us/ (last visited Apr. 29, 2018). 50 Gurry, supra note 45. Transcript pages 25–26. 51 For proposals with respect to such a treaty, see discussion in Part III.C.2 below. 52 NORTH AMERICAN FREE TRADE AGREEMENT, (1994), https://www.nafta-sec-alena.org/Home/Texts-of-the-Agreement/North-American-Free-Trade-Agreement?mvid=2. 53 Article 1703(1) states: “Each Party shall accord to nationals of another Party treatment no less favorable than that it accords to its own nationals with regard to the protection and enforcement of all intellectual property rights…” Id. 54 Article 1714. Id. 55 For example, Article 1714 states: “1. Each Party shall ensure that enforcement procedures, as specified in this Article and Articles 1715 through 1718, are available under its domestic law so as to permit effective action to be taken against any act of infringement of intellectual property rights covered by this Chapter, including expeditious remedies to prevent infringements and remedies to deter further infringements. Such enforcement procedures shall be applied so as to avoid the creation of barriers to legitimate trade and to provide for safeguards against abuse of the procedures. 2. Each Party shall ensure that its procedures for the enforcement of intellectual property rights are fair and equitable, are not unnecessarily complicated or costly, and do not entail unreasonable time limits or unwarranted delays. 3.


vague,56 and the problem remains that a plaintiff may have to file multiple cases in multiple jurisdictions to address infringement of rights in a single invention or brand. As noted above, this can be prohibitively complicated and costly, and it remains an effective barrier to cross-border enforcement of intellectual property rights.

Other trade/investment treaties are bilateral, such as the "ChAFTA" free trade agreement between China and Australia that entered into force in December 2015. 57 ChAFTA includes the principle of national treatment, 58 as well as provisions relating to enforcement and border measures. While Article 11.21 provides that “[e]ach Party commits to implementing effective intellectual property enforcement systems with a view to eliminating trade in goods and services infringing intellectual property rights”,59 and Article 11.22 provides for cooperative border measures to combat trade in pirated copyright goods or counterfeit trademarked goods, ChAFTA does little to address the other sorts of impediments to cross-border enforcement that were outlined in Part II above. In this regard, it is quite typical of the intellectual property clauses found in trade and investment treaties.60

China has concluded bilateral investment treaties with over 100 countries61 and 14 Free Trade Agreements,62 and more are envisaged as its Belt and Road Initiative (BRI) progresses.63 The BRI creates five Each Party shall provide that decisions on the merits of a case in judicial and administrative enforcement proceedings shall: (a) preferably be in writing and preferably state the reasons on which the decisions are based; (b) be made available at least to the parties in a proceeding without undue delay; and (c) be based only on evidence in respect of which such parties were offered the opportunity to be heard.” Id. 56Some of NAFTA’s provisions are reminiscent of the TRIPS Agreement, and similar criticisms can be made of its vague enforcement terminology. In the TRIPS Agreement context, see Yu, supra note 40, at 84. 57 FREE TRADE AGREEMENT BETWEEN THE GOVERNMENT OF AUSTRALIA AND THE GOVERNMENT OF THE PEOPLE’S REPUBLIC OF CHINA (2015), http://dfat.gov.au/trade/agreements/chafta/official-documents/Documents/chafta-agreement-text.pdf. 58 Article 11.5 states: “In respect of intellectual property rights covered in this Chapter, each Party shall accord to nationals of the other Party treatment no less favourable than it accords to its own nationals with regard to the protection of such intellectual property rights, subject to the exceptions provided under the TRIPS Agreement and those multilateral agreements concluded under the auspices of WIPO to which the Parties are party.” Id. 59 Id. 60 For discussions of intellectual property enforcement provisions in trade and investment treaties, see Christopher Arup, The US-Australia FTA, 29 ALTERNATIVE L.J. 27–34 (2004). Dae Hee Lee, KORUS FTA and Intellectual Property Protection in Korea, 5 ASIAN BUS. L. 11–34 (2010). Assafa Endeshaw, Intellectual Property Enforcement in Asia: A Reality Check, 13 INT’L J.L. & INFO. TECH. 378–412 (2005). Horacio Rangel-Ortiz, Intellectual Property and NAFTA, INT’L TRADE L.J. 36–42 (1996). 61 International Trade Administration (ITA), U.S. Department of Commerce, CHINA - TRADE AGREEMENTS | EXPORT.GOV, https://www.export.gov/article?id=China-Trade-Agreements (last visited Apr. 29, 2018). 62 Id. 63 For a summary of China’s strategy around the conclusion of such agreements, see John Whalley et al, China’s Regional and Bilateral Trade Agreements (Nat’l Bureau of Econ. Research, Working Paper No.


maritime and land routes to link Asia, Europe and Africa, opening economic corridors between China and its trading partners. An analysis of the intellectual property clauses in the free trade agreements concluded by China identifies a process moving “from simplicity to complexity and from being contained in some clauses to [occupying a] special chapter [that] reflects the increasing attention paid by China to the international protection of intellectual property rights.”64 Compared with trade and investment agreements concluded by other nations, China’s free trade agreements are unexceptional in their focus on issues other than private international intellectual property issues to date.

Treaties and trade/investment agreements might not provide immediate or direct relief to intellectual property holders who wish to enforce their rights abroad. However, at a macro level, many do provide mechanisms by which a nation’s allegedly inadequate laws or inadequate enforcement of laws can be challenged in an international forum. The WTO has a dispute resolution mechanism for determining outcomes when allegations are made of violations of trade rules. 65 Meanwhile, a common provision within trade and investment agreements allows for "investor-state dispute settlement" (ISDS) through arbitration. Both mechanisms provide dispute resolution options for an intellectual property holder or state that is disappointed with the operation of a particular jurisdiction’s legal system with respect to the enforcement of intellectual property rights within its territory. The WTO Dispute Settlement Body (DSB) establishes panels to consider cases and make findings, and the DSB chooses whether to accept panels’ findings and appeal decisions. A nation that is found to have violated trade rules must promptly rectify the situation by following the DSB’s recommendations or face WTO-sanctioned trade retaliation. In ISDS, a neutral third-party arbitration panel examines the evidence and makes a legally binding and enforceable decision. In effect, these are mechanisms by which an intellectual

19853, 2014), https://voxeu.org/article/china-s-regional-and-bilateral-trade-agreements (last visited Apr. 29, 2018). 64 Xiaoling Li, CHECKLIST--FREE TRADE AGREEMENTS CONCLUDED BY CHINA LEXIS PRACTICAL GUIDANCE - ASIA PORTAL, http://hk.lexiscn.com/asiapg/articles/checklist--free-trade-agreements-concluded-by-china.html (last visited Apr. 29, 2018). The analysis identifies border measures, geographical indications, genetic resources, and traditional knowledge, as “major issues involved in the intellectual property rights clauses of free trade agreements concluded by China.” Id. 65 For discussions of this process, see Lori Wallach, Transparency in WTO Dispute Resolution 31 LAW & POL’Y INT’L BUS. 773–78 (1999). Joel P. Trachtman, Domain of WTO Dispute Resolution, 40 HARV. INT’L. L. J. 333–78 (1999). Alexandra R. Harrington, They Fought for Trade but Did Trade Win: An Analysis of the Trends among Trade Disputes Brought by WTO Member States before the WTO Dispute Resolution Body, 16 MICH. ST. J. INT’L L. 315–42 (2007). Anne Hiaring, Fish of Fowl - The Nature of WTO Dispute Resolution under TRIPS, 12 ANN. SURV. INT’L & COMP. L. 269–88 (2006). Daniel H. Erskine, Resolving Trade Disputes, the Mechanisms of GATT/WTO Dispute Resolution, 2 SANTA CLARA J. INT’L L. [i]-83 (2004).


property holder can try to bring pressure to bear upon a jurisdiction that it believes is hostile or indifferent to its rights.

The Australian "tobacco plain packaging" experience provides an interesting illustration of how these different forums can be used. In 2011, the Australian government passed legislation requiring plain and unappealing packaging of tobacco products, 66 as a health initiative to reduce smoking rates. After lobbying and a media campaign failed to achieve changes to the law, tobacco companies challenged it in the courts. The companies claimed plain packaging would unconstitutionally expropriate intellectual property in their trademarks.67 The High Court of Australia rejected the constitutional challenge and upheld the law,68 with French CJ concluding:

While the imposition of those controls may be said to constitute a taking in the sense that the plaintiffs' enjoyment of their intellectual property rights and related rights is restricted, the corresponding imposition of controls on the packaging and presentation of tobacco products does not involve the accrual of a benefit of a proprietary character to the Commonwealth which would constitute an acquisition. That conclusion is fatal to [the tobacco companies’] case....69

Meanwhile, the governments of five tobacco producing countries requested the WTO DSB establish dispute settlement panels on the grounds that the tobacco plain packaging measures “appear to be inconsistent with a number of Australia's obligations under the TRIPS Agreement…”70 The tobacco industry could not itself bring an action 66 TOBACCO PLAIN PACKAGING ACT, (2011), https://www.legislation.gov.au/Details/C2016C00892. 67 JT Int'l SA v Commonwealth [2012] 250 CLR 1 (Austl.), http://eresources.hcourt.gov.au/ showCase/2012/HCA/43. Para. 2. 68 Id. The case was decided 5:1 in favor of Australia. 69 Id. Para. 44. 70 Identical wording was used in all five complaints: Australia – Certain Measures Concerning Trademarks and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging Request for the Establishment of a Panel by Ukraine (2012), http://dfat.gov.au/international-relations/international-organisations/wto/wto-dispute-settlement/Pages/australia-certain-measures-concerning-trademarks-and-other-plain-packaging-requirements-applicable-to-tobacco-products-an-2.aspx. Australia - Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging- Request for the Establishment of a Panel by Honduras, (2012), http://dfat.gov.au/international-relations/international-organisations/wto/wto-dispute-settlement/bulletin/Documents/honduras-panel-request.pdf. Australia - Certain Measures Concerning Trademarks and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging, (2012), http://dfat.gov.au/international-relations/international-organisations/wto/wto-dispute-settlement/bulletin/Documents/Dominican-Republic-Request-for-Consultations.pdf. Australia - Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging - Request for the Establishment of a Panel by Indonesia, (2014), http://dfat.gov.au/international-relations/international-organisations/wto/wto-dispute-settlement/Documents/indonesia-panel-request.pdf. Australia - Certain


as there is no direct access to the DSB by non-state actors. Instead, the requests were brought by Ukraine (which later discontinued its complaint),71 Honduras, Dominican Republic, Indonesia and Cuba, and the tobacco industry reportedly provided legal support.72 At the time of writing, no official decision has been published.73 However, media outlets reported in May 2017 that the DSB had made a draft finding that Australia had not violated WTO rules.74

Meanwhile, in June 2011, tobacco company Philip Morris Asia took action against Australia in the Permanent Court of Arbitration (PCA) under a bilateral investment treaty between Hong Kong and Australia.75 Alleging unfair or inequitable treatment of an investor by the Australian government, Philip Morris announced that it was seeking suspension of the plain packaging laws and compensation for loss of its trademarks. 76 Ultimately Australia was successful on a

Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements, Applicable to Tobacco Products and Packaging - Request for consultations by Cuba, (2013), http://dfat.gov.au/international-relations/ international-organisations/wto/wto-dispute-settlement/Documents/cuba-panel-request.pdf. 71 WTO, DS434: Australia - Certain Measures Concerning Trademarks and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging (2018), https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds434_e.htm. 72 Christopher Thompson, Big Tobacco Backs Australian Law Opposers, FIN. TIMES (Apr. 30, 2012), https://www.ft.com/content/314c9446-91fb-11e1-867e-00144feab49a. 73 As of 9 April 2018, the latest update on the WTO DSB website states: “On 21 September 2017, the Chair of the panel informed the DSB that in light of the of the complexity of the legal and factual issues that have arisen in this dispute, the Panel expected to issue its final report to the parties by the end of the third quarter of 2017.” WTO, DS435: Australia - Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging, https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds435_e.htm (last visited Apr. 29, 2018). Identical wording was reproduced on the WTO webpages for the complaints by Dominican Republic - WTO, DS441: Australia - Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging (2018), https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds441_e.htm., Cuba - WTO, DS458: Australia — Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging (2018), https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds458_e.htm., and Indonesia - WTO, DS467: Australia - Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging (2018), https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds467_e.htm. 74 Reuters, Australia wins landmark WTO tobacco plain packaging case, ABC NEWS (May 5, 2017), http://www.abc.net.au/news/2017-05-05/australia-wins-landmark-wto-tobacco-packaging-case/8498750. Bruce Baschuk, Tobacco Logo Ban Said to Get WTO Backing in Landmark Case, BLOOMBERG MARKETS, May 4, 2017, https://www.bloomberg.com/news/articles/2017-05-04/wto-said-to-uphold-australia-s-ban-on-cigarette-logos. Simon Chapman, World Trade Organisation gives Australia’s plain tobacco packs the (draft) thumbs up, THE CONVERSATION (May 5, 2017), https://theconversation.com/world-trade-organisation-gives-australias-plain-tobacco-packs-the-draft-thumbs-up-77234. 75 Agreement between the Government of Australia and the Government of Hong Kong for the Promotion and Protection of Investments [1993] ATS 30 (1993), http://www.austlii.edu.au/au/other/dfat/treaties/1993/30.html. 76 Cigarette plain packaging laws pass Parliament, ABC NEWS, Nov. 21, 2011, http://www.abc.net.au/news/2011-11-21/cig-plain-packaging-laws-pass/3684374.


jurisdictional point, on grounds that the tobacco company’s litigation constituted an abuse of rights.77 Given its conclusion that it had no jurisdiction to hear the case, the PCA did not consider Philip Morris’ substantive claims. The plaintiff did not win the case, but it nonetheless demonstrated how an intellectual property owner could use ISDS to exert pressure on a domestic jurisdiction whose laws it considered were failing to protect its interests.78

Although these sorts of actions might be of some benefit to a plaintiff with deep pockets in a jurisdiction that willfully fails to enforce its intellectual property laws, it is significantly less useful to a small or medium sized business or an individual that confronts the sorts of enforcement difficulties outlined in Part II above. Furthermore, concerns about corporate interference with national sovereignty – especially in the context of a measure intended to improve public health – have given rise to a popular backlash against ISDS.79 Criticisms are also found in the academic literature.80 While 77 Philip Morris Asia Ltd. (H.K.) v Commonwealth (2015) PCA Case No. 2012-12. The Tribunal held: “the initiation of this arbitration constitutes an abuse of rights, as the corporate restructuring by which the Claimant acquired the Australian subsidiaries occurred at a time when there was a reasonable prospect that the dispute would materialise and as it was carried out for the principal, if not sole, purpose of gaining Treaty protection. Accordingly, the claims raised in this arbitration are inadmissible and the Tribunal is precluded from exercising jurisdiction over this dispute.” Id. 78 For discussions of these issues, see Masabumi Suzuki, International Investment Agreements, Intellectual Property Rights and Public Health, 261 NAGOYA U. J. L. AND POLITICS 1–16 (2015). Luke Nottage, The Anti-ISDS Bill before the Senate: What Future for Investor-State Arbitration in Australia, 18 INT’L TRADE & BUS. L. REV. 245–93 (2015). Nikesh Patel, An Emerging Trend in International Trade: A Shift to Safeguard against ISDS Abuses and Protect Host-State Sovereignty Notes, 26 MINN. J. INT’L L. [i]-302 (2017). 79 For examples of concerns raised in the media, and government responses, see Peter K. Yu, TPP Trade Pact Still Needs Improvements to Protect Governments from Foreign Suits, THE CONVERSATION (2016), https://theconversation.com/tpp-trade-pact-still-needs-improvements-to-protect-governments-from-foreign-suits-54078. Luke McDonagh, How the Secret TTIP Trade Deal Could Enable Companies to Sue Countries, THE CONVERSATION (2015), https://theconversation.com/how-the-secret-ttip-trade-deal-could-enable-companies-to-sue-countries-50543. Adam Bender, TPP: Australia Pushes against ISDS in Trade Agreement, WikiLeaks reveals, COMPUTERWORLD (Mar. 26, 2015), https://www.computerworld.com.au/article/571302/tpp-australia-pushes-against-isds-trade-agreement-wikileaks-reveals/. Jess Hill, ISDS: The devil in the trade deal Background Briefing (2014), http://www.abc.net.au/radionational/programs/backgroundbriefing/isds-the-devil-in-the-trade-deal/5734490. Greg Wood, The TPP is dead, Malcolm, get over it: And the ISDS needs to be killed, too, writes former deputy secretary of Prime Minister & Cabinet, CRIKEY (Feb. 10, 2017), https://www.crikey.com.au/2017/02/10/the-tpp-is-dead-malcolm-get-over-it/. Gareth Hutchens, Australia “Could Be Sued for Billions” by Foreign Companies under TPP, SYDNEY MORNING HERALD, Nov. 6, 2015, http://www.smh.com.au/federal-politics/political-news/australia-could-be-sued-for-billions-by-foreign-companies-for-new-laws-under-tpp-20151106-gksbjx.html. Henry Farrell, People Are Freaking out about the Trans Pacific Partnership’s Investor Dispute Settlement System. Why Should You Care?, WASHINGTON POST (Mar. 26, 2015), https://www.washingtonpost.com/news/monkey-cage/wp/2015/03/26/people-are-freaking-out-about-the-trans-pacific-partnerships-investor-dispute-settlement-system-why-should-you-care/?utm_term=.b320dd1e0378. 80 For academic discussions and criticisms of ISDS in trade and investment agreements, see Yu, supra note 47. Jonathan Klett, National Interest vs. Foreign Investment - Protecting Parties through ISDS Comments, 25 Tul. J. INT’L & COMP. L. 213–38 (2016). Nottage, supra note 78. Patel, supra note 78.


China has only shown interest in ISDS relatively recently,81 many of its bilateral investment treaties do contain ISDS clauses.82

In light of concerns about ISDS in the EU, the European Commission has proposed an alternative system in the form of a standing multilateral investment court with independent specialist judges.83 Emerging out of trade treaty negotiations between the EU and Canada,84 and colloquially dubbed the "World Investment Court" project, it has grown into a proposal to establish a multilateral court that would replace the ISDS mechanism in all ongoing and future EU investment negotiations.85 While the proposal is viewed as a method of moving past objections to ISDS that are creating stumbling blocks to the conclusion of trade negotiations with some states, 86 its

William L. Owens & R. Andrew Fitzpatrick, Investment Arbitration under NAFTA Chapter 11: A Threat to Sovereignty of Member States, 39 CAN.-U.S. L.J. 55–67 (2015). Cynthia M. Ho, Sovereignty under Siege: Corporate Challenges to Domestic Intellectual Property Decisions, 30 BERKELEY TECH. L.J. 213–304 (2015). 81 Leon E. Trakman, Geopolitics, China, and Investor–State Arbitration, in CHINA IN THE INTERNATIONAL ECONOMIC ORDER 268, 268 (Lisa Toohey, Colin Picker, & Jonathan Greenacre eds., 2015), http://ebooks.cambridge.org/ref/id/CBO9781107449480A029 (last visited Apr. 29, 2018). 82 Jie Wang, Investor-State Arbitration: Where Does China Stand? 32 SUFFOLK TRANSNAT’L L. REV. 493–502 (2008). Heng Wang, The RCEP and Its Investment Rules: Learning from Past Chinese FTAs, 3 THE CHINESE J. GLOB. GOVERNANCE 160–81 (2017), http://booksandjournals.brillonline.com/content/journals/10.1163/23525207-12340026 (last visited Apr. 29, 2018). Wang describes China’s ISDS rules in free trade agreements as “malleable” and observes that China has “not formulated a consistent set of” ISDS clauses in its free trade agreements (at 175). He writes at 171: “China appears to be more accommodating of ISDS rules than other investment provisions”. Id. Trakman, supra note 81. 83 European Commission, THE MULTILATERAL INVESTMENT COURT PROJECT (2017), http://trade.ec.europa.eu/doclib/press/index.cfm?id=1608. STEFFAN HINDELANG & TEOMAN M. HAGEMEYER, IN PURSUIT OF AN INTERNATIONAL INVESTMENT COURT RECENTLY NEGOTIATED INVESTMENT CHAPTERS IN EU COMPREHENSIVE FREE TRADE AGREEMENTS IN COMPARATIVE PERSPECTIVE (2017), http://www.europarl.europa.eu/RegData/etudes/STUD/2017/603844/EXPO_STU(2017)603844_EN.pdf. 84 General Secretariat of the Council of the European Union, JOINT INTERPRETATIVE INSTRUMENT ON THE COMPREHENSIVE ECONOMIC AND TRADE AGREEMENT (CETA) BETWEEN CANADA AND THE EUROPEAN UNION AND ITS MEMBER STATES (2016), http://data.consilium.europa.eu/doc/document/ST-13541-2016-INIT/en/pdf. 85 For discussions of the proposal, see Ian A. Laird, TPP and ISDS: The Challenge from Europe and the Proposed TTIP Investment Court 2015 Canada-United States, 40 CAN.-U.S. L.J. 106–125 (2016). David M. Howard, Creating Consistency through a World Investment Court, 41 FORDHAM INT’L L.J. 1–52 (2017). Yu, supra note 47. 86 EU Trade Commissioner Malmström & Canadian Minister of International Trade Freeland, The case for creating a multilateral investment dispute settlement mechanism 4 (2017), http://trade.ec.europa.eu/doclib/docs/2017/january/tradoc_155264.pdf (“the backlash in certain parts of the world following a number of high profile ISDS cases has prompted discussions on the adequateness of this particular system of dispute settlement. The discussions have focussed on the fact that these cases have involved challenges to public policy in sensitive areas such as health, safety or the environment and therefore are different from traditional commercial arbitration. For some economies, ISDS has become one of the main stumbling blocks for the successful conclusion and implementation of new trade and investment agreements and has contributed to growing scepticism regarding the benefits of such agreements more generally.”). Id. at 1.


proponents argue it also creates consistency and predictability in the enforcement of investment rules:

Creating a genuine multilateral investment dispute settlement mechanism would also be the only way to ensure more consistency and predictability in the interpretation of identical or similar investment rules across different investment agreements. The more agreements would be subject to the jurisdiction of the new mechanism, the more coherence could be built up in the interpretation of their respective provisions, thus improving the legal certainty and predictability of the international investment regime across different regions of the world.87

The EU has suggested the Court would have clear rules and a defined appeal process. It has received some opposition,88 including from the Deutsche Richterbund (DRB)/German Judicial Association.89 It has received cautious support from some other nations and commentators.90 China would appear to be waiting for more details before voicing an opinion,91 particularly against the backdrop of its ongoing negotiations with the EU towards an investment agreement.92

87 EU Trade Commissioner Malmström & Canadian Minister of International Trade Freeland, The case for creating a multilateral investment dispute settlement mechanism 4 (2017), http://trade.ec.europa.eu/doclib/docs/2017/january/tradoc_155264.pdf, at 4. 88 See generally discussion in Laird, supra note 85. 89 See Felix Heilmann & Friederike Rehn, German association of judges opposes Investment Court System proposed for TTIP Stop TTIP: European Initiative Against TTIP and CETA (2016), https://stop-ttip.org/blog/german-association-of-judges-opposes-investment-court-system-proposed-for-ttip/. The original statement can be found in German on the website of the Deutsche Richterbund: Deutsche Richterbund, Opinion on the Recommendation for a Council Decision authorizing the opening of negotiations for a Convention establishing a multilateral Court for the Settlement of Investment Disputes (COM (2017) 493 final) (2017), http://www.drb.de/stellungnahmen/2017/multilateraler-gerichtshof-fuer-investitionsstreitigkeiten.html?L=0. 90 See, e.g., S Arun, A court to fix all investor-state rows?, The Hindu, Oct. 29, 2017. Cherie Blair, A global investment court for a changing era of trade, Fin. Times (Jan. 25, 2017), https://www.ft.com/content/e10e10de-e22e-11e6-9645-c9357a75844a. Michael Goldhaber, Wanted: A World Investment Court, 3 TDM (2004), https://www.transnational-dispute-management.com/article.asp?key=197. 91 Nikos Lavranos, Comment: Selling the Proposal for a Multilateral Investment Court to the World, Borderlex (2016), https://borderlex.eu/comment-selling-proposal-multilateral-investment-court-world/. 92 China and the EU commenced negotiations in 2013, see European Commission, European Commission - Trade Policy - Countries and regions - China Commission and its priorities (2017), http://ec.europa.eu/trade/policy/countries-and-regions/countries/china/. For analysis of the negotiations, see David O’Sullivan, The EU-China Investment Treaty: Challenges, Themes, Competence, 5 China-EU Law J 5–10 (2016), http://link.springer.com/article/10.1007/s12689-016-0067-6 (last visited Apr. 29, 2018). Alan Dukes, Practitioners Perspectives on the China EU Investment Agreement: Stakeholder Reflections from the Business Community in Beijing, 5 China-EU Law J 73–78 (2016), http://link.springer.com/article/10.1007/s12689-016-0064-9 (last visited Apr. 29, 2018). David Hallinan, The EU–China Bilateral Investment Treaty: a Challenging First Test of the EU’s Evolving BIT Model, 5


If it proceeds, the Court could arguably go further than engendering cooperation amongst nations with respect to enforcement of intellectual property laws abroad. It could, instead, generate a type of de facto harmonization of enforcement procedures 93 that could potentially assist intellectual property holders to enforce their rights more easily.

C. Private International Law and Intellectual Property: Jurisdiction, Applicable Law, and Recognition and Enforcement

of Foreign Judgments General "conflict of laws" rules apply when a dispute involves

more than one jurisdiction. These rules involve considerations as to which court has jurisdiction to hear the matter, what body of law will apply in the case, and issues concerning the recognition and enforcement of a foreign judgment in other jurisdictions implicated by the case. These questions can be difficult to address in matters involving the movement of persons and/or tangible things. Complexity can be intensified in intellectual property matters that involve geographically bounded rights to intangible objects that are unconfined by national borders. One issue that can complicate decisions about jurisdiction, applicable law, and recognition and enforcement of foreign judgments is the statutory basis for grants of industrial property (patents, designs, and trademarks), which has traditionally left common law courts reluctant to investigate validity in another state. Another issue arises from the general nature of intellectual property rights, which can be asserted against parties to contracts and licenses (who may have entered into a choice of law agreement), and also against the jurisdictionally-confined "world at large" (where issues such as jurisdiction and applicable law generally need to be determined on a case-by-case basis).94

Various international agreements can be invoked in such cases, though not all of the agreements are binding. The domestic laws of various nations can also come into play, but approaches vary from place to place,95 and/or time to time. For example, in Britain and some

China-EU Law J 31–53 (2016), http://link.springer.com/article/10.1007/s12689-016-0065-8 (last visited Apr. 29, 2018). Louis Brennan & Diarmuid Rossa Phelan, Editorial Introduction to the China–EU Law Journal Special Issue on the EU–China Investment Treaty in Interdisciplinary Perspective, 5 China-EU L. J 1–3 (2016), http://link.springer.com/article/10.1007/s12689-016-0068-5 (last visited Apr. 29, 2018). Hannah Levinger & Syetarn Hansakul, China and the EU: Where Next in Bilateral Trade and Investment Relations? 5 China-EU L. J 55–71 (2016), http://link.springer.com/article/10.1007/s12689-016-0062-y (last visited Apr. 29, 2018). 93 These sorts of procedures are discussed further in Part IV(A) below. 94 For a detailed analysis of intellectual property and private international law, see JAMES J. FAWCETT & PAUL TORREMANS, INTELLECTUAL PROPERTY AND PRIVATE INTERNATIONAL LAW (2nd ed. 2011). 95 For comparison of civil and common law jurisdictions, see MASATO DOGAUCHI, PRIVATE INTERNATIONAL LAW ON INTELLECTUAL PROPERTY: A CIVIL LAW OVERVIEW (2001). GRAEME AUSTIN,


common law countries, the "Moçambique Rule"96 has long meant that a domestic court does not have subject matter jurisdiction over disputes in a foreign land. This has traditionally been extended to copyright infringement in many jurisdictions,97 following recognition of an analogy between foreign land and foreign intellectual property assets.98 However, the UK Supreme Court judgment in LucasFilm v Ainsworth (2011) 99 held that the "Mozambique Rule" applies to considerations of validity of rights, not infringement. Therefore, a domestic court can exercise jurisdiction over whether foreign intellectual property rights are valid. The effect is that foreign litigants could now bring claims before English courts for infringement of their rights under non-UK copyright law. This could be very useful for a Chinese intellectual property holder wanting to enforce a judgment from one court beyond that jurisdiction’s territorial boundaries. For example, it might be used if the applicant and defendant, or the defendant’s assets, are in another jurisdiction.

1. Existing Agreements Several international instruments codify general principles with

respect to the determination of jurisdiction and applicable law, and the recognition and enforcement of foreign judgments. However, the efficacy of each is hampered by the limited number of jurisdictions in which it applies. The nature of intellectual property means their substantive rules may also be problematic when used in intellectual property disputes.

The inter-governmental Hague Conference on Private International Law (HCCH) has produced several relevant instruments. While not specific to intellectual property law, these agreements could be of some assistance in intellectual property disputes involving cross-border enforcement. However, each has limited geographical reach.

The Convention of 30 June 2005 on Choice of Court Agreements100 (Choice of Court Convention) entered into force on 1 October 2015. The Choice of Court Convention is intended to provide “uniform rules on jurisdiction and on recognition and enforcement of foreign judgments in civil or commercial matters”101 by providing for courts PRIVATE INTERNATIONAL LAW AND INTELLECTUAL PROPERTY RIGHTS - A COMMON LAW OVERVIEW (2001). 96 British South Africa Co v. Companhia de Moçambique [1893] AC 602 (Eng.). 97 Tyburn Productions v Conan Doyle [1990] 19 IPR 455 (Austl). Def Lepp Music v Stuart-Brown [1986] 273 RPC (Eng.). Atkinson Footwear Ltd. v Hodgskin International Services Ltd. [1994] 31 IPR 186 (Austl). 98 Potter v Broken Hill Pty Co Ltd [1906] 3 CLR 479 (Austl). 99 LucasFilm v Ainsworth [2011] UKSC 39 (Eng.). 100 CONVENTION OF 30 JUNE 2005 ON CHOICE OF COURT AGREEMENTS (2005), https://www.hcch.net/en/instruments/conventions/status-table/?cid=98. 101 Id. Preamble.


to give effect to parties’ "choice of court" in private commercial agreements, and to recognize and enforce judgments by the court chosen by the parties. It is binding in all ratifying states, however there have only been seven signatories to the Choice of Court Convention (albeit including the large jurisdictions of the EU, the US and China), and it has come into force only in the EU, Mexico and Singapore. With sparse coverage, the Choice of Court Convention is of limited assistance to intellectual property holders involved in cross-border disputes.

The Convention of 1 February 1971 on the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters 102 (Recognition and Enforcement Convention) establishes common rules on mutual recognition and enforcement of judgments in member nations. However, this Convention has only five contracting parties thus far (Albania, Cyprus, Kuwait, the Netherlands, and Portugal), giving it limited utility in cross-border intellectual property disputes.103

In addition, the HCCH has published the Principles on Choice of Law in International Commercial Contracts (Hague Principles). 104 These are non-binding guidelines to assist in the interpretation of private international law by courts and arbitral tribunals, which may also be used as a model for legal instruments promulgated by states or groups of states. The introduction to the Hague Principles states they “may be considered to be an international code of current best practice in relation to party autonomy in international commercial contracts”.105

Instruments covering similar considerations have been promulgated within the EU. The Rome I Regulation106 (for contractual matters) and Rome II Regulation 107 (for non-contractual disputes) determine the applicable law. This will usually “be the law of the

102 Convention of 1 February 1971 on the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters (1971), https://www.hcch.net/en/instruments/conventions/full-text/?cid=78. See also Supplementary Protocol of 1 February 1971 to the Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters (1979), https://www.hcch.net/en/instruments/conventions/full-text/?cid=79. 103 For discussions about the history and prospects of the Recognition and Enforcement Convention, see Andrea Shulz, The Hague Conference Project for a Global Convention on Jurisdiction, Recognition and Enforcement in Civil and Commercial Matters: An Update, in Intellectual Property and Private International Law: Heading for the Future 5–18 (Annette Kur & Josef Drexl eds., 2005). 104 Principles on Choice of Law in International Commercial Contracts (2015), https://www.hcch.net/en/instruments/conventions/full-text/?cid=135 (last visited Apr. 29, 2018). 105 Id. Paragraph I.5 of the Introduction. The HCCH also published an information guide about the Hague Principles: The Hague Conference on Private International Law Permanent Bureau, Principles on choice of law in international commercial contracts. (2015). 106 Regulation (EC) No 593/2008 of 17 June 2008 on the Law Applicable to Contractual Obligations (Rome I), O.J. L177 4.7.2008 (2008). 107 Regulation (EC) No 864/2007 of 11 July 2007 on the Law Applicable to Non-Contractual Obligations (Rome II), O.J. L 199 31.07.2007 (2007).


country for which protection is claimed”,108 though exceptions may apply.109

The EU’s Brussels I Regulation110 determines how decisions will be made about jurisdiction, and the recognition and enforcement of judgments. It provides that defendants should normally be sued in the courts of their domicile 111 or the place of performance of the contract.112 However, exceptions may arise in intellectual property cases, and pan-European relief can be difficult to achieve.113

2. Proposals for an International Intellectual Property-Specific Agreement

Difficulties using general private international law principles with respect to intellectual property cases arise from the territorial basis of intellectual property laws and the intangible nature of the intellectual property to which rights attach. As some of these problems are specific to intellectual property, the last decade has brought a raft of treaty proposals concerning the private international law of intellectual property.

Several proposals by academics recommend a treaty on jurisdiction, choice of law, and enforcement of foreign intellectual property judgments, with agreed principles to apply in all signatory states. The proposals thus far emanate from the US, the EU, and Japan/Korea.

The 2008 ALI Principles 114 from the American Law Institute contain comprehensive rules with respect to jurisdiction, applicable law, and the recognition of foreign judgments. They address many of the problems outlined in Part II above115 and were generally well 108 Id. Article 8(1). 109 Trevor Cook, Territoriality and Jurisdiction in EU IP Law, 19 J INTELLEC PROP RIGHTS 293–97 (2014). 110 Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), (2012), http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:351:0001:0032:EN:PDF. 111 Id. Article 4. 112 Id. Article 7(1)(a). 113 See discussion in Cook, supra note 109, at 294ff. For calls for reform of the earlier version of the Brussels I Regulation with respect to cases involving cross-border patent disputes, see European Max Planck Group on Conflict of Laws in Intellectual Property (CLIP), Exclusive Jurisdiction and Cross Border IP (Patent) Infringement Suggestions for Amendment of the Brussels I Regulation (2006), http://www.ip.mpg.de/fileadmin/ipmpg/content/clip/Exclusive_clip_brussels_i_dec_06_final4.pdf. Fawcett & Torremans, supra note 94, at Chapter 11.II. 114 American Law Institute, Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes (2008), http://www.wipo.int/edocs/lexdocs/laws/en/us/us218en-part8.pdf. 115 For discussions of the ALI Principles, see François Dessemontet, The ALI Principles: Intellectual Property in Transborder Litigation, in Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US 31 (Jürgen Basedow, Toshiyuki Kono, & Axel Metzger eds., 2010). Toshiyuki Kono & Paulius Jurčys, Intellectual Property and Private


received, particularly in the US. 116 However, they attracted some criticism in Europe. 117 In assessing the likelihood of the ALI Principles being adopted as, for example, the basis of an HCCH convention on aspects of private intellectual property law, Fawcett and Torremans conclude:

if there were to be such a convention it is by no means clear that the ALI Principles would be the starting point, given that there are the alternative CLIP Principles. The excessive complexity of the ALI Principles on coordination of actions and the excessive reliance in the coordination Principles on US concepts and on the doctrine of forum non conveniens is likely to make this cornerstone of the ALI Principles unacceptable to European lawyers, who are likely to prefer the CLIP Principles which closely resemble the Brussels I Regulation.118

The 2009 Transparency Principles were produced to improve Japanese law.119 Meanwhile, a separate Japanese–Korean proposal, known as the Waseda Principles, was produced in 2010. 120 The KOPILA Principles were being prepared by the Korean Private

International Law: Comparative Perspectives 11 (Toshiyuki Kono ed., 2012). Rita Matulionyte, The Law Applicable to Online Copyright Infringements in the ALI and CLIP Proposals: A Rebalance of Interests Needed, 2 J. Intell. Prop. Info. Tech. & Elec. Com. L. 26, 36 (2011). 116 François Dessemontet, A European Point of View on the Ali Principles-Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgements in Transnational Disputes, 30 BROOK. J. INT’L L. 849, 863 (2004) (stating that first reactions to the ALI Principles were “surprisingly positive”). 117 Id. 118 FAWCETT & TORREMANS, supra note 94 at 219. 119 INTELLECTUAL PROPERTY AND PRIVATE INTERNATIONAL LAW: COMPARATIVE PERSPECTIVES, (Toshiyuki Kono ed., 2012). Page 207, paragraph 16.4.2.1. Toshiyuki Kono, The Transparency Project, Its Achievements, and Some Cross-Cutting Issues Transparency of Japanese Laws Project, 53 JAPANESE Y.B. INT’L L. 306–19 (2010). Kono writes: “The Project aimed at changing the current state of Japanese law as a black hole and indirectly at attracting more foreign investors through enhancing transparency, i.e., providing more information on Japanese law in the form of high-quality translations of key legal texts.” Id. at 312. For discussions of the Transparency Principles, see Shigeki Chaen, Toshiyuki Kono & Dai Yokomizo, Jurisdiction in Intellectual Property Cases: The Transparency Proposal, in INTELLECTUAL PROPERTY IN THE GLOBAL ARENA: JURISDICTION, APPLICABLE LAW, AND THE RECOGNITION OF JUDGMENTS IN EUROPE, JAPAN AND THE US at 77–145 (Jürgen Basedow, Toshiyuki Kono & Axel Metzger eds., 2010). Ryu Kojima, Ryo Shimanami & Mari Nagata, Applicable Law to Exploitation of Intellectual Property Rights in the Transparency Proposal, in INTELLECTUAL PROPERTY IN THE GLOBAL ARENA: JURISDICTION, APPLICABLE LAW, AND THE RECOGNITION OF JUDGMENTS IN EUROPE, JAPAN AND THE US at 179-228 (Jürgen Basedow, Toshiyuki Kono & Axel Metzger eds., 2010). Toshiyuki Kono, Nozomi Tada & Miho Shin, Recognition and Enforcement of Foreign Judgments Relating to IP Rights and Unfair Competition: The Transparency Proposal, in INTELLECTUAL PROPERTY IN THE GLOBAL ARENA: JURISDICTION, APPLICABLE LAW, AND THE RECOGNITION OF JUDGMENTS IN EUROPE, JAPAN AND THE US 293–340 (Jürgen Basedow, Toshiyuki Kono & Axel Metzger eds., 2010). 120 Waseda University Global COE Project, Commentary on Principles of Private International Law on Intellectual Property Rights (Joint Proposal Drafted by Members of the Private International Law Association of Korea and Japan (Waseda University Global COE Project)) (2010), http://www.win-cls.sakura.ne.jp/pdf/28/08.pdf.


International Law Association (KOPILA) 121 at the same time, and were reportedly intended to be incorporated into the Waseda Principles.122

In 2011, the Max Planck Institute in Germany released the final text of the CLIP Principles. 123 Like the ALI Principles, the CLIP Principles were intended to assist interpretation and/or supplement local laws, to instruct parties to draft contracts and resolve disputes, and as a possible model for law-makers in national, regional and international fora.124

Detailed comparative analysis of the various proposals125 points to many similarities, but also diverges on some important issues – such as the determination of applicable law to initial ownership of intellectual property126 – and significant differences in the details.

The concerns addressed in the various academic proposals have also been picked up by both the Committee on Intellectual Property and Private International Law of the International Law Association (ILA Committee)127 and WIPO. WIPO hosted a Forum on Private

121 KOPILA, Principles on International Intellectual Property Litigation - Approved by KOPILA on March 26, 2010, 16 Korea Priv. Int'l L. J. 377–397 (2010), http://www.dbpia.co.kr/Journal/ArticleDetail/NODE01845379. 122 KONO & JURČYS, supra note 115, at 12. 123 European Max Planck Group on Conflict of Laws in Intellectual Property (CLIP), Principles on Conflict of Laws in Intellectual Property (Final Text) (2011), http://www.ip.mpg.de/fileadmin/ipmpg/content/clip/Final_Text_1_December_2011.pdf. 124 For discussions of the CLIP Principles, see Christian Heinze, A Framework for International Enforcement of Territorial Rights: The CLIP Principles on Jurisdiction, in Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US 53–76 (Jürgen Basedow, Toshiyuki Kono & Axel Metzger eds., 2010). Axel Metzger, Applicable Law under the CLIP Principles: A Pragmatic Revaluation of Territoriality, in Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US 157–78 (Jürgen Basedow, Toshiyuki Kono & Axel Metzger eds., 2010). Pedro de Miguel Asensio, Recognition and Enforcement of Judgments in Intellectual Property Litigation: The CLIP Principles, in Intellectual Property in the Global Arena: Jurisdiction, Applicable Law, and the Recognition of Judgments in Europe, Japan and the US at 239–92 (Jürgen Basedow, Toshiyuki Kono, & Axel Metzger eds., 2010). Annette Kur, Jurisdiction and Enforcement of Foreign Judgments -- The General Structure of the MPI Proposal, in Intellectual Property and Private International Law: Heading for the Future 21–34 (Annette Kur & Josef Drexl eds., 2005). Marcus Norrgård, Provisional Measures and Multiple Defendants in the MPI Proposal, in Intellectual Property and Private International Law: Heading for the Future 35–54 (Annette Kur & Josef Drexl eds., 2005). Alexander Peukert, Contractual Jurisdiction Clauses and Intellectual Property, in Intellectual Property and Private International Law: Heading for the Future 55–84 (Annette Kur & Josef Drexl eds., 2005). 125 Rita Matuionyte, IP and Applicable Law in Recent International Proposals: Report for the International Law Association, 3 J. Intell. Prop. Info. Tech. & Elec. Com. L. 263–305 (2012). With respect to enforcement issues. See also Paulius Jurčys, International Jurisdiction in Intellectual Property Disputes: CLIP, ALI Principles and other Legislative Proposals in a Comparative Perspective, 3 JIPITEC 174–226 (2012), https://www.jipitec.eu/issues/jipitec-3-3-2012/3518/jurcys.pdf. 126 Matuionyte, supra note 125 at 294, paragraph 170. 127 Committees, INTERNATIONAL LAW ASSOCIATION, http://www.ila-hq.org/index.php/committees.


International Law and Intellectual Property in 2001,128 and the ILA and WIPO hosted a joint seminar on public international law and intellectual property in 2016.129 The ILA Committee is working to prepare a set of guidelines on which national, regional or international law-making organizations could model instruments with respect to intellectual property and private international law, 130 and has published a set of draft guidelines.131 If such guidelines were to form the basis of an international agreement promulgated, for example, by the HCCH or WIPO, the foundations would be in place for ratification by nations. If large numbers of nations were to ratify the treaty – which, as noted above, they have with many other intellectual property treaties – this would go a long way to address the enforcement problems faced by intellectual property holders in cross-border disputes.

D. Commercial Arbitration: the New York Convention & UNCITRAL Model Law

If a foreign judgment may not be able to be enforced locally and/or competing parties have to litigate the same case repeatedly to achieve legally binding resolutions in multiple jurisdictions, commercial arbitration can offer an attractive alternative. It is increasingly being used as a dispute resolution option in intellectual property cases because it allows for "party autonomy" as parties choose their own decision-makers in the form of the arbitrator or arbitral panel, and also choose the applicable law, and the place and language of proceedings. Arbitration can be faster than litigating: it can be more flexible, and it allows for confidential hearings and confidentiality attached to the award (equivalent to a court’s judgment), and awards are usually final and not subject to appeal. Although arbitration of intellectual property

128 WIPO Forum on Private International Law and Intellectual Property, (2001), http://www.wipo.int/meetings/en/details.jsp?meeting_id=4243 (last visited Apr. 27, 2018). 129 Rochelle Dreyfuss et al., SEMINAR ON INTELLECTUAL PROPERTY AND PRIVATE INTERNATIONAL LAW (2015), http://www.wipo.int/edocs/mdocs/enforcement/en/wipo_ila_ip_ge_15/wipo_ila_ip_ge_15_ppt.pdf. 130 Paulius Jurčys, Rita Matuionyte & Benedetta Ubertazzi, Intellectual Property and Private International Law Part II: Committees, 75 INT’L L. ASS’N REP. CONF. 791 (2012). “The Committee aims to examine the current state of the legal framework concerning the protection of IP rights in the international sphere. In addition, the Committee also aspires to discuss some of the issues that have emerged after the adoption of legislative proposals. At the outset the members of the Committee agreed to keep the options regarding the possible outcomes of the Committee open (ie depending on the progress of the discussions, the Committee may adopt a resolution, recommendation. principles, model law or perhaps a draft text for an international treaty).” Id. at 792. 131 Rutendo Muchinguri, Intellectual Property and Private International Law Part II: Committees, 77 INT’L L. ASS’N REP. CONF. 733, 734–41 (2016). The draft is available online: INTERNATIONAL LAW ASSOCIATION, ILA GUIDELINES ON INTELLECTUAL PROPERTY AND PRIVATE INTERNATIONAL LAW (DRAFT) (2015), http://www.ip.mpg.de/fileadmin/IP/pdf3/ILA_Guidelines-16Oct2015.pdf.


disputes is not permitted under the laws of all countries,132 its benefits make commercial arbitration a popular alternative to litigation in many intellectual property disputes. Therefore, while not specific to intellectual property law, several international agreements and organizations concerning commercial arbitration are of particular relevance to discussions about cross-border enforcement of intellectual property rights.

The Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York Convention)133 gives effect to private agreements to arbitrate by providing for the enforcement of arbitral awards in multiple jurisdictions. The 157 contracting states134 agree to recognize and enforce arbitration awards made in other contracting states, and the grounds on which a national court might refuse to recognize and enforce an arbitral award are more limited than the grounds on which it might refuse to recognize and enforce a judgment of a foreign court. China acceded to the New York Convention on 22 January 1987, with the reservation that:

“1. The People's Republic of China will apply the Convention, only on the basis of reciprocity, to the recognition and enforcement of arbitral awards made in the territory of another Contracting State; 2. The People's Republic of China will apply the Convention only to differences arising out of legal relationships, whether contractual or not, which are considered as commercial under the national law of the People's Republic of China.”135

Arbitration also has obvious advantages over the more limited geographic jurisdiction of individual nations as it allows multiple issues covering multiple jurisdictions to be determined in one legally binding arbitral decision that is enforceable by the domestic courts of multiple nations. While arbitration is an option only for willing parties who have agreed to this form of dispute resolution either before

132 See generally William Grantham, The Arbitrability of International Intellectual Property Disputes, 14 BERKELEY J. INT’L L. 173 (1996). Steven A. Certilman & Joel E. Lutzker, Arbitrability of Intellectual Property Disputes, in ARBITRATION OF INTERNATIONAL INTELLECTUAL PROPERTY DISPUTES 55–96 (Thomas D. Halket ed., 2012). 133 CONVENTION ON THE RECOGNITION AND ENFORCEMENT OF FOREIGN ARBITRAL AWARDS, (1958), http://www.uncitral.org/pdf/english/texts/arbitration/NY-conv/New-York-Convention-E.pdf. 134 New York Arbitration Convention, CONTRACTING STATES, http://www.newyorkconvention.org/countries. 135 Id. Details of the history of China’s accession to the New York Convention can be found in Nadia Darwazeh & Friven Yeoh, Recognition and Enforcement of Awards under the New York Convention China and Hong Kong Perspectives, 25 J. OF INT'L ARB.837–56 (2008). Robert Pé & Michael Polkinghorne, Two Steps Forward, One Step … Sideways: Recent Developments in Arbitration in China, 25 J. OF INT'L ARB. 407–14 (2008).


problems arose (eg. in a commercial contract) or afterwards, it can offer an attractive alternative to complex cross-border litigation.

Prepared by the UN’s Commission on International Trade Law, the UNCITRAL Model Law on International Commercial Arbitration (Model Law)136 provides a template for legislation that nations can voluntary incorporate into their domestic laws. UNCITRAL reports that legislation based on its Model Law “has been adopted in 78 States in a total of 109 jurisdictions”.137 While it has not directly adopted the Model Law, China’s arbitration law’s provisions have been influenced by it.138

In addition, the UNICRAL Arbitration Rules139 can be adopted by parties to commercial agreements. The rules contain a model arbitration clause that can be inserted into a contract, as well as setting out procedures for the conduct of an arbitration in the event of a dispute. This includes information about the form an award must take, and its interpretation.

The WIPO Arbitration and Mediation Center140 acts as a neutral provider of services for the resolution of international intellectual property disputes. It is a non-profit organization that provides parties with model clauses and agreements through which they can submit disputes to the WIPO Center for resolution through mediation, arbitration, expedited arbitration, med-arb (which may, for example, arise from use of the WIPO model clause that provides for “mediation, followed in the absence of a settlement by (expedited) arbitration.”),141 or expert determination. The WIPO Center also maintains a list of "neutrals" (mediators and arbitrators) who can be employed to resolve disputes. In addition, the WIPO Center is one of several dispute resolution organizations responsible for the arbitration of disputes under the Uniform Domain Name Dispute Resolution Policy142 of the Internet Corporation for Assigned Names and Numbers (ICANN).

136 UNCITRAL MODEL LAW ON INTERNATIONAL COMMERCIAL ARBITRATION (1985), https://www.trans-lex.org/450900/_/uncitral-model-law-on-international-commercial-arbitration/. 137 UNCITRAL, Status UNCITRAL Model Law on International Commercial Arbitration (1985), with amendments as adopted in 2006, http://www.uncitral.org/uncitral/en/uncitral_texts/arbitration/1985Model_arbitration_status.html.Australia, for example, is a state with 9 jurisdictions (the Commonwealth of Australia, plus the states and territories, such as Victoria and New South Wales), while China is a state with 3 jurisdictions (the Peoples Republic of China, plus Hong Kong and Macao). 138 Michael J. Moser & John Choong, China and Hong Kong, in Practitioner’s Handbook on International Commercial Arbitration (Frank-Bernd Weigand ed., 2009) 371, para 4.09. 139 United Nations Commission on International Trade Law, UNCITRAL Arbitration Rules. 140 WIPO, WIPO Arbitration and Mediation Center, http://www.wipo.int/amc/en/center/background.html. 141 Sarah Theurich, Efficient Alternative Dispute Resolution in Intellectual Property, WIPO Magazine, 2009, http://www.wipo.int/wipo_magazine/en/2009/03/article_0008.html. 142 Uniform Domain Name Dispute Resolution Policy, (1999), https://www.icann.org/en/help/dndr/udrp/policy.


In addition to those offered by the UNCITAL and the WIPO Center, various rules and model clauses, and commercial arbitration facilities and services, are provided by other generalist dispute resolution organizations.143 These include the American Arbitration Association’s International Centre for Dispute Resolution (ICDR),144 the World Bank’s International Centre for the Settlement of Investment Disputes (ICSID), 145 the International Chamber of Commerce’s (ICC) International Court of Arbitration,146 JAMS,147 the London Court of International Arbitration, 148 Hong Kong International Arbitration Centre (HKIAC), 149 and the Singapore International Arbitration Centre (SIAC).150

Each of these examples offers a route by which parties can use arbitration as an alternative to litigation. In the context of trans-border disputes, commercial arbitration provides a means by which parties can circumvent some of the problems outlined in Part II (eg. corruption and other problems with judicial systems; inadequate remedies; the need to litigate in multiple jurisdictions with respect to a single example of infringing activity). While it cannot be guaranteed that arbitral awards will be enforced internationally – for example, a national court in a New York Convention country might nonetheless refuse to enforce an arbitral award on jurisdictional or public policy grounds151 – commercial arbitration does offer an alternative to multi-jurisdictional litigation that will often overcome problems outlined in Part II above.

143 For a general overview, see Frank L. Politano, The Rules of Selected Administrative Bodies Relevant to Intellectual Property Disputes, in Arbitration of International Intellectual Property Disputes 185–222 (Thomas D. Halket ed., 2012). 144 AAA, American Arbitration Association, https://www.adr.org/. 145 ICSID, International Centre for Settlement of Investment Disputes, https://icsid.worldbank.org/en/. ICSID is established under The Convention on the Settlement of Investment Disputes between States and Nationals of Other States, (1965). 146ICC, INTERNATIONAL CHAMBER OF COMMERCE, https://iccwbo.org/dispute-resolution-services/. 147 JAMS, JAMS, https://www.jamsadr.com/. This organization was formerly known as Judicial Arbitration and Mediation Services, Inc. 148 LCIA, THE LONDON COURT OF INTERNATIONAL ARBITRATION, http://www.lcia.org/. 149 HKIAC, HONG KONG INTERNATIONAL ARBITRATION CENTRE, http://www.hkiac.org/. Hong Kong adopted the UNCITRAL Model Law in 1990, which has arguably contributed to its success as an arbitration hub: Moser and Choong, supra note 138. Page 370, para 4.06. 150 SIAC, SINGAPORE INTERNATIONAL ARBITRATION CENTRE, http://www.siac.org.sg/. 151 For discussions of these defenses, see: Karl-Heinz Bockstiegel, Public Policy as a Limit to Arbitration and Its Enforcement, 2 DISP. RESOL. INT’L 123 (2008). J. Martin H. Hunter, International Commercial Arbitration, 11 INT’L BUS. LAW. 203–5 (1983). Nicholas Poon, Striking a Balance between Public Policy and Arbitration Policy in International Commercial Arbitration, 2012 SING. J. LEGAL STUD. 185–95 (2012). Mark W. Friedman, Jurisdictional Limits on Enforcement of New York Convention Awards, 2 DISP. RESOL. INT’L 150–65 (2008). Olivier van der Haegen, European Public Policy in Commercial Arbitration: Bridge Over Troubled Water, 16 MAASTRICHT J. EUR. & COMP. L. 449 (2009).


E. Conclusion: Cooperation through Treaties and Agreements Part III of this article has indicated many ways in which nations

cooperate through international treaties and agreements to standardize the way in which intellectual property can be acquired outside a person’s home nation, and in which cross-border disputes can be addressed. While the focus of treaties to date has mainly been on smoothing the path to cross-border acquisition of intellectual property, ongoing initiatives to establish a convention addressing issues such as jurisdiction, choice of courts, and recognition and enforcement of foreign judgments would overcome many of the problems described above in Part II. In the meantime, China’s conclusion of numerous bilateral trade and investment agreements goes some way to improving predictability for intellectual property holders, both in China, and in its partner nations.

Another way in which impediments to trans-border enforcement in cross- and/or multi-jurisdiction intellectual property disputes can be diminished is through harmonization of intellectual property laws, judicial bodies, and administrative procedures. Harmonization initiatives are discussed in Part IV of this article.

IV. CONSISTENCY THROUGH HARMONIZATION Harmonization occurs when nations establish uniform minimum

standards of protection and/or enforcement through the adoption of equivalent laws (this type of harmonization may be dubbed "standardization", as it creates equivalent but not identical laws and legal conditions). It also occurs when nations adopt shared rules and institutions to align their domestic intellectual property laws, courts and/or administrative procedures with those of other participating nations. Both methods engender consistency in the laws of various nations, and this can help to overcome some of the barriers to enforcement described in Part II above.

Harmonization tends to occur in either a horizontal or vertical arrangement, each of which has the capacity to create uniform legal conditions throughout multiple jurisdictions. Each model can apply comprehensively, or to only some areas of intellectual property law, or to only the acquisition of rights, or enforcement of those rights. There is, therefore, scope for great variation even when nations are said to have harmonized their intellectual property laws. The following sections explore how horizontal and/or vertical harmonization can assist parties to disputes with intellectual property enforcement. They also note where the harmonization of measures with respect to acquisition of intellectual property has put in place foundations on which further measures may be built to smooth cross-border enforcement of intellectual property rights.


A. Horizontal Harmonization The first type of harmonization could be described as "horizontal".

This is an intentional, formal arrangement, which involves independent nations agreeing to implement laws that will be applied uniformly across their jurisdictions and/or to share registry offices. In this model, nations continue to participate in the law-making decisions that determine what will be protected as intellectual property within their jurisdiction, and how that intellectual property will be protected. This section examines several instances of horizontal harmonization. Of these, administrative harmonization is of most relevance to China thus far.

1. Regional Harmonization One type of horizontal harmonization is characterized by its

regional nature. It effectively groups nations together to expand the geographical reach of their collective intellectual property laws. For outsiders – such as Chinese businesses that hold intellectual property assets in the relevant regions – such arrangements can ease the acquisition and/or enforcement of their intellectual property interests abroad.

Europe provides the most comprehensive example to date of horizontal harmonization of intellectual property laws. 152 In the European Union (EU), the European Commission (EC) makes laws with respect to intellectual property. Harmonization occurs when Member States align domestic statutes with the EC’s laws, either through the adoption of EC Regulations, which are legally enforceable in all Member States upon their commencement, or through the adoption of binding EC Directives, which Member States are required to give effect to in their national laws. Having created EU-wide standardization of laws (via Regulations) and/or legal principles (via Directives), enforcement is left at first instance to the domestic courts in which an alleged infringement occurs. The European Court of Justice (CJEU) is the final court of appeal, and national courts are required to follow precedents it sets. While this leaves scope for variations in the way in which laws are enforced within different Member States, and therefore scope for forum shopping in multi-jurisdictional disputes, the overall effect is to create a general uniformity in the application of intellectual property law throughout the EU.

152 For more detailed explanations of European intellectual property laws, see Catherine Seville, EU Intellectual Property Law and Policy, Second Edition (2nd ed. 2016). Annette Kur & Thomas Dreier, European Intellectual Property Law: Text, Cases and Materials (2013). Justine Pila & Paul Torremans, European Intellectual Property Law (1st ed. 2016).


For the most part, the EU’s intellectual property laws are harmonized only with respect to acquisition and the nature of rights. Enforcement remains the responsibility of national courts. Each EU Member State may administer inter alia national copyright, patent, trademark and design laws, which must comply with the EU laws with respect to copyright, 153 patent, trademarks, 154 and designs. 155 In addition, the EU Intellectual Property Office (EUIPO) registers unitary trademarks (EUTMs) and designs (RCDs) with effect throughout the European Union. While this creates consistency in the creation of the intellectual property, and rights are harmonized through EU laws, infringements must be litigated in the domestic courts of EU Member States. The CJEU is the final appellate court for EUTM and RCD cases, and also for national trademarks and designs. This creates a degree of harmonization in the way in which the courts of Member States enforce trademark and design laws through the EU. However, if an EUTM or RCD is infringed in multiple EU jurisdictions through a single action, the proprietor is faced with having to enforce it separately through the courts of the various nations in which it has allegedly been infringed.

153 The EU’s copyright acquis with respect to copyright protection is comprised of ten directives dealing with different aspects of this area of law. These are: Council Directive 93/98/EEC of Oct. 29, 1993, Harmonizing the Term of Protection of Copyright and Certain Related Rights, [1003],1993 O.J. (L 290). Directive 2009/24/EC, of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs (Codified version), [2009] O.J. (L 111) (2009). Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property, [1992] O.J. (L 346) (1992). Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission, [1993] O.J. (L 248) (1993). Directive 2011/77/EU of the European Parliament and of the Council of 27 September 2011 amending Directive 2006/116/EC on the term of protection of copyright and certain related rights, [2011] O.J. (L 265/1) (2011). Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, [1996] O.J. (L 77) (1996). Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art, [2001] O.J. (L 272) (2001). Directive No. 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society, [2001] O.J. (L 167) (2001). Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, [2004] O.J. (L 157) (2004). Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works, [2012] O.J. (L 299) (2012). Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market, [2014] O.J. (L 84) (2014). 154 DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL OF 22 OCTOBER 2008 TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADE MARKS, 2008 O.J. (L 299) 25 (2008), Trademark Directive. COUNCIL REGULATION 207/2009 OF 26 FEBRUARY 2009 ON THE COMMUNITY TRADE MARK, 2009 O.J. (L 78) 1 (EC) (2009). 155 DIRECTIVE 98/71/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL OF 13 OCTOBER 1998 ON THE LEGAL PROTECTION OF DESIGNS 1998, O.J. (L 289) 28 (1998). DIRECTIVE 2006/115/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL OF 12 DECEMBER 2006 ON RENTAL RIGHT AND LENDING RIGHT AND ON CERTAIN RIGHTS RELATED TO COPYRIGHT IN THE FIELD OF INTELLECTUAL PROPERTY (CODIFIED VERSION), [2006] OJ L 376 (2006).


While not formally an EU institution, 156 the European Patent Office (EPO) administers a single-grant procedure to issue patents that apply in 38 EU and non-EU countries. EPO grants create national patents, which are enforced by national courts. Therefore, a case involving cross-border infringement may need to be litigated in multiple jurisdictions. The EU has provisions for recognition and enforcement of judgments, 157 but this remains complicated. Thus, European intellectual property harmonization has, to date, tended to focus on processes for obtaining intellectual property, and uniformity with respect to the rights that attach to that property. Enforcement has generally remained a matter for each jurisdiction.

The proposed Unitary Patent and Unified Patent Court (UPC) – together known as the Unitary Patent System 158 – could mark the beginning of patent harmonization within Europe that extends from grant to enforcement of rights. 159 The EPO will issue the Unitary Patent, which is a "European patent with unitary effect (also referred to as a EPUE).” It will have effect throughout the territory of all the jurisdictions that have signed the UPC Agreement. This covers most EU Member States (with the exception of Croatia, Poland and Spain), thereby replicating – albeit on a smaller scale – the harmonization of intellectual property acquisition that already exists with EPO-issued patents. The UPC 160 will extend harmonization into the sphere of enforcement, with Unitary Patents being able to be litigated in a single court rather than needing to be enforced individually in national jurisdictions. This could help to overcome many of the sorts of problems outlined in Part II above.

The UPC will be watched closely, and it remains to be seen whether other nations will follow its lead. Will the UPC herald a trend towards the creation of other regional or international intellectual property courts?

In time, it is also possible that the Unitary Patent could evolve into a global patent, and the UPC could evolve into a global patent court. Britain’s scheduled departure from the EU in 2019 would, unless arrangements are made to alter existing rules, leave Britain outside the EU’s intellectual property aquis. The Unitary Patent and UPC have also been created as institutions available only to EU members so, 156 The jurisdiction of the EPO flows from the CONVENTION ON THE GRANT OF EUROPEAN PATENTS, (1973). 157 See supra Part III.C.2. 158 EUROPEAN COUNCIL AGREEMENT ON A UNIFIED PATENT COURT 2013/C, 2013 O.J. C 175/01, 28. 159 REGULATION (EU) NO. 1257/2012 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL OF 17 DECEMBER 2012 IMPLEMENTING ENHANCED COOPERATION IN THE AREA OF THE CREATION OF UNITARY PATENT PROTECTION, (2012), http://www.wipo.int/wipolex/en/details.jsp?id=13315. 160 The UPC is due to commence in “early 2018”: Unified Patent Court, ENTRY INTO FORCE AND PREPARATORY WORK, https://www.unified-patent-court.org/faq/entry-force-and-preparatory-work (last visited Apr. 27, 2018).


under existing rules, they would also be expected to cease to apply in Britain after "Brexit.” However, the Unitary Patent and UPC are not technically EU institutions,161 so it is possible their constitution could be amended to allow the continued participation of Britain beyond 2019. Indeed, this would seem to be envisaged by a somewhat ambiguous but optimistic statement on the UPC’s website about the effect of Brexit on Britain’s ongoing participation. 162 And if the Unitary Patent System were to be opened to one non-EU nation, why not more? The continued participation of Britain post-Brexit might create a precedent for the participation of non-EU nations in the Unitary Patent and UPC, and could even open the door to participation by nations such as Australia, China and the US. Over time, this could even transform the Unitary Patent System into a Global Patent System.163 At least with respect to patents, this would go a long way toward overcoming some of the enforcement problems outlined in Part II above. It could also provide a precedent that could be followed in the context of design, trademark, and perhaps even copyright law.

The EU is not the only grouping of nations to have harmonized intellectual property laws. Other examples of horizontal harmonization occur when a group of nations forms a regional organization for the governance of intellectual property. The joint intellectual property arrangements administered by the Benelux Office for Intellectual Property (BOIP), 164 and the intellectual property arrangements put in place by the Cooperation Council for the Arab States of the Gulf (GCC) are two instances that will be discussed in this article. Other regional groupings that are not specifically addressed in this article but that provide examples of varying degrees of harmonization are: the African Regional Intellectual Property Organization (ARIPO), 165 Organisation Africaine de la Propriété

161 This is due to a constitutional issue. See Court of Justice of the European Union, The draft agreement on the creation of a European and Community Patent Court is not compatible with European Union law (2011), https://curia.europa.eu/jcms/upload/docs/application/pdf/2011-03/cp110017en.pdf. 162 The FAQ page states: “The long-term participation of the UK in the Unitary Patent system is legally possible. However, this is a political decision to be taken by the EU, its remaining Member States and the UK. Should the UK’s withdrawal from the EU become legally effective, EU Regulations No 1257/2012 and 1260/2012 creating the Unitary Patent system will cease to apply there. This will not, however, lead to a loss of patent protection in the UK for Unitary Patent proprietors. Appropriate solutions are likely to be put in place to avoid this happening. The protection of acquired rights and the preservation of legal certainty are general principles of law respected throughout Europe.” European Patent Office, FAQ - UNITARY PATENT, https://www.epo.org/service-support/faq/procedure-law/faq.html (last visited Apr. 27, 2018). 163 For a more detailed discussion of this possibility, see Alexandra George, Restructuring Intellectual Property Jurisdiction Post-Brexit: Strategic Considerations for the European Union and Britain, 43 BROOK. J. INT’L L. 131, 158–61, 177–89 (2017). 164 Benelux Office for Intellectual Property (BOIP), (2018), https://www.boip.int/en. 165 African Regional Intellectual Property Organization (ARIPO), http://www.aripo.org/ (last visited Apr. 27, 2018).


Intellectuelle (OAPI), 166 and arrangements in the Latin American MERCOSUR and PROSUR groupings.167

Under the provisions of the Benelux Convention on Intellectual Property (the Benelux Convention), BOIP registers trademarks and designs that cover Belgium, the Netherlands and Luxembourg.168 As well as harmonizing registration requirements, the Benelux Convention contains provisions to promote uniform enforcement across national boundaries in the Benelux region. For example, it provides for mutual recognition of judgments in the courts of all three Benelux states. 169 Further, to prevent a case being litigated simultaneously in the different jurisdictions, the Benelux Convention also provides for the referral of a dispute from the court of one Benelux country to that of another where an associated dispute has already commenced.170With respect to trademarks and designs, these measures arguably overcome many of the enforcement difficulties described in Part II above.

Originally established in 1981, the GCC is an intergovernmental union comprising the Kingdom of Bahrain, the State of Kuwait, the Sultanate of Oman, the State of Qatar, the Kingdom of Saudi Arabia, and the States of United Arab Emirates.171 Heads of State of the GCC Members form the Supreme Council, which passes unanimous enactments that are implemented by the Ministerial Council. The Economic Agreement Between the GCC States contains a provision agreeing to cooperate and develop laws ensuring protection of

166 Organisation Africaine de la Propriété Intellectuelle, , http://www.oapi.int/ (last visited Jan 23, 2018). 167 See, respectively, Instituto de la Propiedad Intelectual de Buenos Aires, Protocol on Harmonization of Intellectual Property Norms in MERCOSUR in the Field of Trademarks, Indications of Source & Appellations of Oringin (1995), mer. WIPO Media Center, WIPO to Support South American Countries in Regional Collaborative Project (2011), http://www.wipo.int/pressroom/en/articles/2011/article_0006.html. 168Benelux Convention on Intellectual Property (Trademarks and Designs) (Feb. 25, 2005), https://www.boip.int/uploads/inline/BOIP%20BCIP%20EN.pdf (last visited Apr. 27 2018). 169 Art. 1.14 states: “The authority of court decisions handed down in one of the three States pursuant to this convention shall be recognized in the other two States and court ordered cancellation shall be carried out by the Office at the request of the most diligent party, if: a. in accordance with the legislation of the country in which the decision was handed down, the extract of the order resulting from it meets the conditions regarding its authenticity; b. the decision is no longer open to opposition or appeal or to reversal by a court of cassation.” Id. 170 Art. 4.6(5) states: “The courts of one of the three countries shall, if one of the parties so requests, refer disputes brought before them to the courts of one of the other two countries where these disputes are already pending there or when they are associated with other disputes placed before these courts. Referral may only be requested when the actions are pending at first instance. This shall apply to the benefit of the first court in which an action is initially brought, unless another court has given a decision in the matter other than just an internal provision, in which case referral shall be to the other court.” Id. 171 About GCC - Objectives, (2018), http://www.gcc-sg.org/en-us/AboutGCC/Pages/StartingPointsAndGoals.aspx.


intellectual property,172 and the GCC has passed laws harmonizing aspects of patent and trademark law.173

Based in Riyadh, Saudi Arabia, within the Secretariat-General of the GCC, the Patent Office of the Cooperation Council for the Arab States of the Gulf 174 grants a pan-GCC patent that automatically extends throughout the six Gulf Cooperation states. The Office applies the Unified Patent Law that was issued by the Supreme Council of the Gulf Cooperation Council in 1992 and implemented by patent regulations in 2006.175 As the GCC does not provide a unified court to hear patent-related disputes, infringement actions are heard in the courts of the Member State in which the alleged violation occurred.176 Therefore, harmonization is only partial and does not address all of the enforcement concerns raised earlier.

The GCC has also issued a uniform trademark law.177 However, the GCC has not established a central trademark registry, so each Member State must apply the uniform law when assessing applications for national trademark registrations. As Member States issue only domestic trademarks, separate registration is needed in each Member State to achieve trademark protection throughout the entire GCC region. Part 5 of the law deals with enforcement of rights, including provisions allowing customs to seize infringing goods at the border,178 but it does not address cross-border enforcement issues.

The patent and trademark arrangements put in place by the GCC arguably lay the foundations that would be needed for centralized enforcement of patent and trademark rights in the region. If groups of 172 Economic Agreement Between the GCC States (Jan. 1, 2003), http://www.wipo.int/edocs/ lexdocs/treaties/en/gcc2/trt_gcc2.pdf. Art. 20 states: “Member States shall develop programs encouraging talented individuals and supporting innovation and invention; cooperate in the field of intellectual property and develop regulations and procedures ensuring protection of intellectual property rights; and coordinate their relevant policies towards other countries, regional blocs and international and regional organizations.” Id. 173 About GCC - Organizational Structure, http://www.gcc-sg.org/en-us/AboutGCC/Pages/ OrganizationalStructure.aspx (last visited Apr. 27, 2018). 174 Patent Office of the Cooperation Council for the Arab States of the Gulf,, http://www.gccpo.org/DefaultEn.aspx (last visited Apr. 27, 2018). 175 Paten Regulation of the Cooperation Council for the Aran States of the Gulf and its Implementing Bylaws, 2016. 176 Jan Wrede, The GCC Patent, THE PATENT LAWYER,at 50, 53, https://www.dennemeyer.com/fileadmin/ user_upload/news/gcc_patent_published_in_the_patent_lawyer_magazine.pdf (last visited Apr. 22, 2018). Jan Wrede & Abdullah Almazroa, Narrowing The Gulf In Patent Law, INTELLECTUAL PROPERTY MAGAZINE （July 3, 2017）, https://www.intellectualpropertymagazine.com/patent/narrowing-the-gulf-in-patent-law-125020.htm?utm_source=Mondaq&utm_medium=syndication&utm_campaign=inter-article-link (last visited Apr. 27, 2018). 177 TRADEMARKS LAW OF THE GULF COOPERATION COUNCIL STATES, (2015), http://www.wipo.int/edocs/lexdocs/laws/en/gcc/gcc003en.pdf. For a discussion of the implementation of this law, see Sarah Morgan, GCC Trade Mark Law: Finding Consistency Across the Gulf, WORLD INTELLECTUAL PROPERTY REVIEW (2017), https://www.worldipreview.com/contributed-article/gcc-trade-mark-law-finding-consistency-across-the-gulf (last visited Apr. 27, 2018). 178 The GCC Trademarks Law, supra note 177, art. 38.


countries – such as the GCC – were to unite to adopt BOIP-like provisions concerning recognition of judgments in intellectual property cases, as well as rules concerning the consolidation of related intellectual property cases brought in any court within their jurisdictions, it would go a long way towards overcoming cross-border enforcement problems.

While such arrangements have thus far tended to be regional and concluded between nations with shared legal traditions, it is not inconceivable that they could provide a precedent or model for more ambitious harmonization schemes involving other countries. For example, when negotiating trade or investment treaties, nations could agree to degrees of intellectual property harmonization (as distinguished from the more diverse standardization created by existing treaties such as TRIPS and the Paris and Berne Conventions). This might involve nations agreeing to use a uniform model law and/or joint registry for the creation of trademark, design and/or patents. It could even extend to the formation of uniform or joint courts. While the extension of "regional harmonization" beyond regions seems rather far-fetched at present, it remains possible that a leading trading jurisdiction – such as the EU, China or the US – could in time precipitate such harmonization by negotiating such provisions in bilateral or multilateral agreements with its trading and/or investment partners.

2. Administrative Harmonisation The trend towards sharing and streamlining the administrative

burden of the patent examination process represents a different type of horizontal harmonization. In this model, nations retain decision-making authority but can adopt patent search and examination work done by other states’ registry offices. If different nations share workload, it seems almost inevitable that a degree of harmonization will follow. While this impacts mainly on the acquisition of intellectual property, it nonetheless helps to harmonize national legal systems’ performances with respect to intellectual property. This could in turn assist intellectual property owners wishing to enforce their rights in cross-jurisdictional disputes in those nations.

Several examples already exist of this type of administrative harmonization of intellectual property registration practices. 179 The aforementioned PCT 180 provides a unified procedure by which inventors can lodge a centralized "international application" that

179 While groupings of nations engaging in administrative harmonization may also be regional in nature, their key harmonizing feature in the current discussion is their focus is on sharing of administrative workload. 180 PCT, supra note 24.


simultaneously requests patents in multiple nations. One of the PCT’s International Search Authorities then conducts searches of the prior art and issues an opinion on the patentability of the invention, and an international preliminary examination may be done at the applicant’s request. After an initial period, the application is sent to the national patent offices nominated by the applicant, which conduct an examination for registrability in that jurisdiction. As the national examiner can rely on the PCT searches and any preliminary examination, standards are likely to become somewhat harmonized between the PCT’s 152 parties.

In addition to the PCT,181 China is involved in another example of administrative harmonization known as Patent Prosecution Highways. These are arrangements in which nations agree to expedite domestic patent applications that have already been examined by other participant states. By relying on search and examination work already carried out by other registry offices – even if full examinations are then conducted locally – participants not only reduce the administrative burden, but also increase the cross-jurisdictional uniformity of patent examination practices. This goes some way towards harmonizing patent arrangements within the participant jurisdictions. Several overlapping highways have been established or are being piloted. Examples include:

the Patent Prosecution Highway, with 46 members, 182 including China;

the Global Patent Prosecution Highway pilot (GPPH), which has 24 participants;183

the IP5 Highway,184 which involves the EPO, the JPO, the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People's Republic of China (SIPO), and USPTO;185 and

bilateral highways.

181 WIPO, supra note 26. 182 Patent Prosecution Highway Portal Site, (2018), http://www.jpo.go.jp/ppph-portal/index.htm?utm_source=twitterfeed&utm_medium=twitter (last visited Apr. 27, 2018). 183 Global Patent Prosecution Highway simplifies existing network, (2018), http://www.jpo.go.jp/ppph-portal/globalpph.htm. (last visited Apr. 27, 2018). 184 Five IP Offices, IP5 Patent Prosecution Highway (IP5 PPH), https://www.fiveipoffices.org/ activities/ws/ip5pph.html (last visited Apr. 27, 2018). 185 For a description of the various patent prosecution highways, see Mary Munroe, The Patent Prosecution Highway gets more traffic (Jul. 28, 2017), https://www.pof.com.au/patent-prosecution-highway-gets-traffic/ (last visited Apr. 27, 2018).


The use of such Highways within a group of trading nations – such as those involved in China’s Belt and Road Initiative – could increase connectivity and, in time, lead to further administrative harmonization of patent practices. However, it is worth noting empirical research that suggests that USPTO patent examiners rely mainly on prior art they have found themselves, even to the exclusion of prior art identified by patent examiners assessing counterpart applications in other nations.186 Such practices could undermine the harmonizing effect of administrative work-sharing by patent registries.

Another example of administrative harmonization is found in the "Trilateral Co-operation" involving the EPO, Japan Patent Office (JPO), and the United States Patent and Trademark Office (USPTO), work towards harmonization of the administration of industrial property, and the interoperability of their office systems.187

Meanwhile the Vancouver Group involves collaborative agreements between the national registries of Australia, Canada and Britain to simplify the patent examination process and remove duplication of work through the adoption of "mutual exploitation principles.”188 In essence, it gives rise to a default position of reliance on patents granted by other members of the Group, or searches and examinations performed by other members of the Group, though further examination may still be undertaken locally if thought necessary. This sort of reliance on other nations’ patent examinations and/or grants arguably goes a significant way towards harmonizing patent practices between the participant nations.

The ten members of the Association of Southeast Asian Nations (ASEAN)189 operate a similar system known as the ASEAN Patent Examination Co-operation (ASPEC). ASPEC provides for the patent registry offices of members190 to consider the search and examination

186 Christopher A. Cotropia, Mark A. Lemley & Bhaven N. Sampat, Do Applicant Patent Citations Matter? Implications for the Presumption of Validity, 42 RESEARCH POLICY 844–54 (2013). See also Mark A. Lemley, Can the Patent Office Be Fixed, 15 MARQ. INTELL. PROP. L. REV. 295–308 (2011). Page 301. 187 The Trilateral Co-operation, https://www.trilateral.net/index.html (last visited Apr. 27, 2018). 188Intellectual Property Offices of Australia, Canada and the United Kingdom, Vancouver Group - Mutual Exploration Principles, https://www.ipaustralia.gov.au/sites/g/files/net856/f/vg_mutual_exploitation_ principles.pdf (last visited Apr. 27, 2018). 189 The ASEAN Member States are: Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Myanmar, Philippines, Singapore, Thailand, and Viet Nam: Association of SouthEast Asian Nations, ASEAN MEMBER STATES, http://asean.org/asean/asean-member-states/. The organization was established in 1967: “To accelerate the economic growth, social progress and cultural development in the region through joint endeavours in the spirit of equality and partnership in order to strengthen the foundation for a prosperous and peaceful community of Southeast Asian Nations.” ASEAN, The Asean Declaration (1967), at para. 2(1), http://asean.org/the-asean-declaration-bangkok-declaration-bangkok-8-august-1967/ (last visited Apr. 27, 2018). 190 Of the ASEAN nations, all but Myanmar participate in ASPEC: ASPEC, ASEAN Patent Examination Co-operation (ASPEC) Programme Procedures (2017) at para.1.2.,


results of corresponding applications by registry offices from other members when conducting examinations under their own laws. When an applicant requests an ASPEC examination, it does not require the receiving office to rely on the results from other members. However, doing so may reduce workload, speed up examination timeframes, lead to cost savings, and increase consistency of outcomes between the different nations’ patent offices. In addition to ASPEC, ASEAN also provides various common facilities to its members. These include a trademark desk manual for examiners, 191 trademark,192 design, 193 patent, 194 and geographical indications 195 databases, and an enforcement action plan.196 Notably, the enforcement action plan is rather general in nature and, while it addresses piracy and counterfeiting, it does little to address the sorts of problems of cross-jurisdictional enforcement outlined in Part II of this article.

A conclusion can be drawn from this brief survey of examples of regional and administrative harmonization that horizontal harmonization has the potential to underpin enforcement rules that would address many of the practical difficulties faced by intellectual property owners who wish to enforce their rights. Weinian Hu has argued that substantive administrative harmonization – aka "work sharing" – will gradually harmonize the patent management systems of participating nations with respect to rule making, decision making, and enforcement. He says:

Once relevant rules are harmonised among the group of offices, such rules may be effectively exported to third countries by means of, for example, capacity building. By doing so, substantive administrative harmonisation will be achieved at working level among a broader range of countries. Therefore, perhaps as a compromise to substantive legal harmonisation,

https://www.ipos.gov.sg/docs/default-source/Protecting-your-ideas/Patent/aspec-notice-and-procedures-(revised-5-oct-2017).pdf (last visited Apr. 27, 2018). 191 ASEAN SECRETARIAT, COMMON GUIDELINES FOR THE SUBSTANTIVE EXAMINATION OF TRADEMARKS 372 (2017), https://www.aseanip.org/Portals/0/Common%20Guidelines%20for%20the%20Substantive%20 Examination%20of%20Trademarks%20(FIN.Oct....pdf?ver=2017-12-12-151214-493 (last visited Apr. 27, 2018). 192 ASEAN, ASEAN Tmview, http://www.asean-tmview.org/tmview/welcome# (last visited Apr. 27, 2018). 193 ASEAN, ASEAN Designview, http://www.asean-designview.org/designview/welcome (last visited Apr. 27, 2018). 194 ASEAN, ASEAN PatentScope, http://ipsearch.aseanip.org/wopublish-search/public/patents;jsessionid= B11141C2147FFDF9E6E0035A8A1B217E (last visited Apr. 27, 2018). 195 ASEAN, ASEAN GI DATABASE, http://asean-gidatabase.org/gidatabase/ (last visited Apr. 27, 2018). 196 ASEAN, ASEAN IPR Enforcement Action Plan 8 (2015), https://www.aseanip.org/Portals/0/ ASEAN%20IPR%20Enforcement%20Action%20Plan.pdf?ver=2018-01-04-150134-093 (last visited Apr. 27, 2018).


work sharing, or substantive administrative harmonisation, could be a direction for furthering international patent rights harmonisation for the time being.197

While the focus of the examples thus far has been primarily on registration, and on aspects of enforcement such as standardization of rights and border cooperation measures by customs authorities, the Unitary Patent, the UPC, and BOIP’s trademark and design arrangements each demonstrate how existing infrastructure can provide the foundations for harmonization that would assist in cross-border enforcement of intellectual property rights. To date, harmonization has usually been unifying with respect to the grant of property. However, if unitary patents, trademarks and designs could be enforced through a single court, this would provide a level of harmonization that would overcome many of the enforcement problems discussed in Part II above. This is an area in which it is conceivable that China might, in due course, start to play a leading role amongst its trading and investment partners.

B. Vertical Harmonization A second type of harmonization might be described as "vertical".

This de facto form of harmonization occurs when a nation adopts the intellectual property laws and/or outsources functions to the registration bodies of another country. In this model, nations relinquish their administrative functions198 and/or law-making power with respect to some or all recognition of intellectual property. However, they tend to retain legal power over the determination of disputes involving intellectual property within their jurisdiction.

An example of vertical harmonization can be found in the Kingdom of the Netherlands. As well as administering intellectual property arrangements for its members within the EU, BOIP’s Department of the Caribbean Netherlands (Rijksdienst Caribisch Nederland) also implements the BES Trademarks Act 199 for the Caribbean Netherlands. This applies in the three Dutch municipalities of Bonaire, Sint Eustatius, and Saba, which lie in the Caribbean Sea. 197 HU WEINIAN, INTERNATIONAL PATENT RIGHTS HARMONISATION: THE CASE OF CHINA 67 (2017). (footnotes omitted from quote). 198For an analysis of patent search and examination as administrative and legal functions, see Beth Simone Noveck, Peer to Patent: Collective Intelligence, Open Review, and Patent Reform, 20 HARV. J.L. & TECH. 123 (2006). 199 TRADEMARKS ACT FOR THE BES ISLANDS [WET MERKEN BES], (2010), http://www.caribie.nl/sites/www.caribie.nl/files/gebruiker10/afbeeldingen/2012.03.26-trademarks_act_for_the_bes_islands.pdf. Regualation Implementing the Trademarks Act for the Bes Islands [Uitvoeringsbesluit Merken Bes] (2010), http://www.caribie.nl/sites/www.caribie.nl/ files/gebruiker10/afbeeldingen/2012.03.26-regulation_implementing_the_trademarks_act_for_the_bes_ islands.pdf (last visited Apr. 27, 2018).


Although separated by the Atlantic Sea from Europe, the BES Islands are "special municipalities" within the Netherlands (itself a country within the Kingdom of the Netherlands). 200 Thus, the Dutch government makes the laws that apply in the BES Islands, and parties can bring intellectual property matters before the courts of either the Netherlands or one of the BES Islands.201 Vertical harmonization is perhaps a natural extension of this governance arrangement.

Another example of vertical harmonization is found in systems whereby a nation re-registers or recognizes (through direct application) foreign intellectual property rather than administering its own comprehensive trademark, patent and/or design registration office. It could be argued that this already occurs with respect to copyright as a result of national treatment provisions giving rise to reciprocity of recognition of foreign copyright under the Berne Convention and some other copyright agreements.

With respect to industrial property, this type of vertical harmonization is common in the South Pacific, where island nations have relatively small populations and limited resources. 202 For example, French trademarks apply directly in the South Pacific islands of French Polynesia, New Caledonia, and the Wallis & Futuna Islands, 203 and French patents apply in automatically in New Caledonia, and upon request in French Polynesia.204 American Samoa, Guam, and the Northern Mariana Islands are covered by US trademark registrations.205 Kiribati, the Solomon Islands, and Tuvalu re-register British trademark and patent registrations.206 Similarly, British patents can be re-registered in Fiji (which also operates a national patent registration system), Kiribati, the Solomon Islands, Tuvalu, and Vanuatu.207 A Nauruan patent application can be based on a pending

200 Government of the Netherlands, Caribbean Parts of the Kingdom - New Constitutional Order, https://www.government.nl/topics/caribbean-parts-of-the-kingdom/new-constitutional-order (last visited Apr. 27, 2018). 201 With grateful thanks to Elina Blaauboer, lawyer at VanEps Kunneman VanDoorne, for providing information about the application of laws in the BES Islands. 202 For a general discussion of intellectual property laws in the South Pacific region, see: Miranda Forsyth, Intellectual Property Laws in the South Pacific: Friend or Foe?, 7 JSPL (2003), https://www.usp.ac.fj/ index.php?id=13236. 203Tracey Berger, TRADE MARK REGISTRATION IN THE PACIFIC ISLANDS (2012), http://www.spruson.com/ trade-mark-registration-in-the-pacific-islands/. 204 EDWARD GENOCCHIO, PATENT PROTECTION IN THE SOUTH PACIFIC (2013), http://www.spruson.com/wp-content/uploads/2014/05/Patent-Protection-in-the-South-Pacific.pdf. Jonathan Lewis, PATENT PROTECTION IN THE PACIFIC (2016), http://www.cullens.com.au/general/patent-protection-in-the-pacific/. 205 Berger, supra note 203. 206 Id. Aminiasi Vulaono & Artika Prasad, How IP Registration Varies around the South Pacific, MANAGING INTELLECTUAL PROPERTY (2013), http://www.managingip.com/Article/3244473/How-IP-registration-varies-around-the-South-Pacific.html. 207 GENOCCHIO, supra note 204.


or granted Australian, British, or US patent, 208 and New Zealand patents automatically apply in the Cook Islands, Niue and Tokelau.209

Vertical patent harmonization may also occur when a nation opts to outsource patent search and/or examination functions to an established patent registry in another nation. For example, Papua New Guinea operates a national intellectual property bureaucracy,210 but substantive examinations are conducted on its behalf by IP Australia.211 Cambodia outsources patent searches and examinations to the Intellectual Property Office of Singapore (IPOS), 212 and the Intellectual Property Office of Brunei Darussalam outsources substantive patent examinations to the patent registries of Austria, Denmark and Hungary. 213 In these instances of vertical harmonization, the conduct of patent examination functions by established overseas registry offices has the potential to increase consistency of examination practices within the participating states.

It is also interesting to ponder how the practice of large established patent registries outsourcing their search and examination work to other patent registries with specific areas of expertise, or to private organizations in lower-cost economies, may also have a vertically harmonizing effect. For example, the UK Intellectual Property Office outsources patent examinations to India,214 and the USPTO outsources international patent examinations.215 IPOS’ historical partnership with patent offices in Austria, Denmark, and Hungry to conduct searches 208 Id. 209 Lewis, supra note 204. 210 IPOPNG, INTELLECTUAL PROPERTY OFFICE OF PAPUA NEW GUINEA (2018), http://ipopng.gov.pg/(last visited Apr 27, 2018). 211 Vulaono & Prasad, supra note 206. See also IPOPNG, INTELLECTUAL PROPERTY OFFICE OF PAPUA NEW GUINEA - ABOUT IPOPNG (2018), http://ipopng.gov.pg/about-ipopng/(last visited Apr 27, 2018). 212 Nick Redfearn, Cambodia’s Patent Outsourcing Adventure Starts, ROUSE, 2016, https://www.rouse.com/magazine/articles/ip-komodo-blog/cambodias-patent-outsourcing-adventure-starts/?tag=cambodia (last visited Apr 27, 2018). 213 BRUIPO, PATENT (2018), http://www.bruipo.gov.bn/SitePages/patent.aspx (last visited Apr 27, 2018). 214 HU, supra note 197.at 76. 215 Brigid Quinn, USPTO Explores Outstanding International Paten Examination Function, USPTO (2002), https://www.uspto.gov/about-us/news-updates/uspto-explores-outsourcing-international-patent-examination-functions (last visited Apr 27, 2018). Office of the Chief Communications, USPTO Contracts international Patent Application Searches to Commercial Firms, USPTO (2005), https://www.uspto.gov/about-us/news-updates/uspto-contracts-international-patent-application-searches-commercial-firms (last visited Jan 22, 2018) (last visited Apr 27, 2018). WIPO International Bureau, Extension of Appointment of the United States Patent and Trademark Office as an International Preliminary Examining Authority under the PCT, Extension of Appointment of the United States Patent and ... - WIPO. This document states: “In addition to the USPTO staff examiners, about 375 contract examiners are utilized to carry out search and examination of PCT international applications which specify the USPTO as the International Searching Authority. The outsourcing of PCT Chapter I work is carried out by the USPTO to more efficiently adapt to its workload needs.” Id. For criticism of this approach, see John A. Jeffery, Preserving the Presumption of Patent Validity: An Alternative to Outsourcing the U.S. Patent Examiner’s Prior Art Search, 52 CATH. U. L. REV. 761(2002).


and examinations according to Singaporean standards has been said to:

raise the overall quality of patents granted in Singapore, align Singaporean practices with that of other established regimes (eg. the European Patent Office, the patent offices of the US, UK and Japan), and strengthen business and investor confidence in Singapore’s IP regime.216

In an increasingly globalized world, it seems natural that patent registries would collaborate in the interests of efficiency.217

It remains to be seen whether this type of harmonization will take a step further as AI-driven search and examination software is developed. If one or more established intellectual property registries were to commission an AI-driven search and/or examination system, which was then sold to patent offices around the world, it might further entrench vertical harmonization of these procedures. 218 The effect could be even more pervasive if a private organization were to develop a patent search system that was sold to patent attorneys and lawyers, as well as to governmental patent registries.219

The reasons for adopting vertical harmonization might lie in colonial or post-colonial relationships and/or reflect the practicality that it is more efficient and cheaper than employing specialist examiners and operating a comprehensive patent and trademark registry. 220 To the extent they relinquish law-making and administrative responsibility for intellectual property in a vertical harmonization structure, these nations become interdependent. To the extent that these systems are harmonized, it can assist people who 216 Ronald Yu, Patent Law Reform in Hong Kong: Lessons from Singapore, in PATENTS AND INNOVATION IN CHINA AND HONG KONG: TWO SYSTEMS IN ONE COUNTRY COMPARED 232, 237 (Yahong Li ed., 2017). 217 Jeremy Phillips has observed: “we live in a new era now and we must be prepared to evaluate every suggestion on its merits, however formerly unthinkable it might have been.” Jeremy Phillips, Outsourcing of IP office functions: no longer a joke, 5 JOURNAL OF INTELLECTUAL PROPERTY LAW & PRACTICE 389 (2010). 218 For a discussion of patent office automation, see Andrew Chin, Search for Tomorrow: Some Side Effects of Patent Office Automation Frontiers in Empirical Patent Law Scholarship, 87 N.C. L. REV. 1617 (2008). Little has thus far been written in the academic literature on the use of AI in patent searching. However, for a discussion of new questions raised by the use of AI with respect to patenting, see Ben Hattenbach & Joshua Glucoft, Patents in An Era of Infinite Monkeys and Artificial Intelligence, 19 STAN. TECH. L. REV. 32 (2015). 219 For a discussion of an earlier form of outsourcing to private organizations, see discussions of the Japanese patent office in R. Polk Wagner, Understanding Patent-Quality Mechanisms, 157 U. PA. L. REV. 2135–74 (2008). Isamu Yamauchi & Sadao Nagaoka, Does the outsourcing of prior art search increase the efficiency of patent examination? Evidence from Japan, 44 RESEARCH POLICY 1601 (2015), http://www.sciencedirect.com/science/article/pii/S0048733315000797 (last visited Apr. 27, 2018). 220 For a discussion of the factors South Pacific island nations weigh prior to establishing national intellectual property bureaucracies, see Miranda Forsyth, Intellectual property laws in the South Pacific : friend or foe?, 7(1) Journal of South Pacific Law,1 (2003).


intend to acquire intellectual property in foreign or multiple jurisdictions.

However, the examples of vertical harmonization examined above tend to concern only the acquisition of intellectual property. Nations remain largely independent with respect to enforcement of intellectual property rights within their territories. It would only be if enforcement functions were also outsourced to other countries – somewhat akin to the aforementioned situation in the BIS Islands, where parties can litigate locally or in the Netherlands’ courts – that vertical harmonization is likely to combat the barriers to cross-border enforcement discussed earlier in this article.

C. Conclusion: Consistency through Harmonization Either the horizontal or vertical model of harmonization can create

a quite comprehensive framework of intellectual property institutions in which recognition and/or enforcement of intellectual property is likely to be quite uniform across the participating jurisdictions. Harmonization has thus far been limited, and has had a commensurately muted impact worldwide. However, the various examples of de jure and de facto harmonization given in Part IV of this article suggest that nations are gradually but increasingly working together in ways that standardize procedures for the acquisition of intellectual property across national borders. As China’s intellectual property system develops, and as China’s economic influence over its trading and investment partners grows, so too does the ability of China to influence intellectual property harmonization processes of the future.

V. THE FUTURE OF INTERNATIONAL COOPERATION & HARMONIZATION IN INTELLECTUAL PROPERTY ENFORCEMENT &

DISPUTE RESOLUTION Treaty making has been a major contributor to the globalization of

intellectual property laws and enforcement of intellectual property rights. While it remains central to the protection of intellectual property interests internationally, this approach has distinct limitations with respect to enforcement. Perhaps it is because the right to enforce one’s intellectual property interests arises as a spontaneous accompaniment to ownership that the enforcement problems discussed in Part II tend not to have attracted prominence in existing intellectual property treaties. Whatever the reasons, it is abundantly evident that intellectual property interests can remain prohibitively difficult, cumbersome, and expensive to enforce cross-territorially. For Chinese businesses holding intellectual property interests abroad,


and foreign intellectual property holders in China, problems can arise when it comes to enforcing rights in cross-jurisdictional contexts.

A practical reality is that international treaties have assisted greatly in enabling cross-jurisdictional recognition and acquisition of intellectual property, but have provided limited assistance when it comes to enforcement of rights attaching to that property. Not all nations are members of the relevant treaties, and – despite standard minimum requirements – not all treaty members offer the same protections as one another. This means the practical effects of intellectual property rights will vary among jurisdictions. Even when nations have instituted comparable standards of protection, intellectual property owners usually need to take separate enforcement measures in each jurisdiction in which their rights have been compromised. Again, this can be complicated and unaffordable, and it offers an unviable solution for most individuals and businesses.

Beyond the "no trespassing" effect of informing the public that that one has legally-enforceable intellectual property rights, intellectual property is of relatively limited use if its associated rights cannot be enforced for practical reasons such as cost. In a world that is ever more globalized through international networks of commerce and communications, this creates uncertainty and practical impediments that are unacceptable to businesses competing on an international stage. In such a globalized world, it is impractical – and often commercially unacceptable – to have to go to separately to the courts of each foreign jurisdiction in which an intellectual property owner seeks to enforce its rights.

In such an environment, businesses operating beyond national boundaries are likely to welcome the cooperation and harmonization efforts described in this article with respect to intellectual property laws and administrative procedures. The international framework seems to have been designed with more emphasis upon with cross-border acquisition of rights than enforcement of those rights. However, years of evolution and globalization of the intellectual property system have put in place foundations on which enforcement institutions could be built. The extension of EPO patents to Unitary Patents and the Unified Patent Court offers an example of how this could occur. BOIP’s trademark and design arrangements offer another. It will not be surprising if, in due course, other regional and multilateral organizations develop unitary patents, trademarks and/or designs, and international courts through which to enforce them. Nor will it be surprising if China comes to play an ever-greater role in determining this future of international cooperation and harmonization.