Research Handbook on Intellectual Property and Investment Law (Research Handbooks in Intellectual Property series)

560 Pages·2020·3.391 MB·English

by  Christophe Geiger (editor)

RESEARCH HANDBOOK ON INTELLECTUAL
PROPERTY AND INVESTMENT LAW
RESEARCH HANDBOOKS IN INTELLECTUAL PROPERTY
Series Editor: Jeremy Phillips, Intellectual Property Consultant, Olswang, Research Director,
Intellectual Property Institute and co-founder, IPKat weblog
Under the general editorship and direction of Jeremy Phillips comes this important new
Research Handbook series of high quality, original reference works that cover the broad
pillars of intellectual property law: trademark law, patent law and copyright law – as well
as less developed areas, such as geographical indications, and the increasing intersection of
intellectual property with other fields. Taking an international and comparative approach,
these Research Handbooks, each edited by leading scholars in the respective field, will com-
prise specially commissioned contributions from a select cast of authors, bringing together
renowned figures with up-and-coming younger authors. Each will offer a wide-ranging
examination of current issues in intellectual property that is unrivalled in its blend of critical,
innovative thinking and substantive analysis, and in its synthesis of contemporary research.
Each Research Handbook will stand alone as an invaluable source of reference for all
scholars of intellectual property, as well as for practising lawyers who wish to engage with the
discussion of ideas within the field. Whether used as an information resource on key topics, or
as a platform for advanced study, these Research Handbooks will become definitive scholarly
reference works in intellectual property law.
Titles in the series include:
Research Handbook on Human Rights and Intellectual Property
Edited by Christophe Geiger
Research Handbook on Intellectual Property in Media and Entertainment
Edited by Megan Richardson and Sam Ricketson
Research Handbook on Intellectual Property and the Life Sciences
Edited by Duncan Matthews and Herbert Zech
Research Handbook on Copyright Law
Second Edition
Edited by Paul Torremans
Research Handbook on Intellectual Property and Creative Industries
Edited by Abbe E.L. Brown and Charlotte Waelde
Research Handbook on Patent Law and Theory
Second Edition
Edited by Toshiko Takenaka
Research Handbook on Intellectual Property and Digital Technologies
Edited by Tanya Aplin
Research Handbook on Intellectual Property and Technology Transfer
Edited by Jacob H. Rooksby
Research Handbook on Intellectual Property and Investment Law
Edited by Christophe Geiger
Research Handbook on Intellectual
Property and Investment Law
Edited by
Christophe Geiger
Professor of Law and Director of the Research Department, Centre for
International Intellectual Property Studies (CEIPI), University of Strasbourg,
France
RESEARCH HANDBOOKS IN INTELLECTUAL PROPERTY
Cheltenham, UK • Northampton, MA, USA
© Christophe Geiger 2020
All rights reserved. No part of this publication may be reproduced, stored in a retrieval system
or transmitted in any form or by any means, electronic, mechanical or photocopying, recording,
or otherwise without the prior permission of the publisher.
Published by
Edward Elgar Publishing Limited
The Lypiatts
15 Lansdown Road
Cheltenham
Glos GL50 2JA
UK
Edward Elgar Publishing, Inc.
William Pratt House
9 Dewey Court
Northampton
Massachusetts 01060
USA
A catalogue record for this book
is available from the British Library
Library of Congress Control Number: 2019954476
This book is available electronically in the
Law subject collection
DOI 10.4337/9781788977821
ISBN 978 1 78897 781 4 (cased)
ISBN 978 1 78897 782 1 (eBook)
Contents
List of tables viii
List of contributors ix
List of abbreviations xi
1 Introduction 1
Christophe Geiger
PART I CONCEPTUALIZING THE RELATIONSHIP BETWEEN
INTELLECTUAL PROPERTY AND INVESTMENT PROTECTION
SECTION 1 THE INTERACTION BETWEEN INTELLECTUAL
PROPERTY AND INVESTMENT IN THE CONTEXT OF
TRADE AND INVESTMENT TREATIES
2 Protecting intellectual property through trade and investment agreements:
concepts, norm-setting and dispute settlement 11
Henning Grosse Ruse-Khan
3 The object and purpose of mingling intellectual property, trade and investment 48
Susy Frankel
4 Mapping the evolution and trends of the nexus between intellectual
property, trade and investment 63
Pedro Roffe
5 When is intellectual property an ‘investment’? 94
Ruth L. Okediji
6 Intellectual property as protected investment: redefining the reach of
investors’ rights 120
Carlos Correa
7 The relevance of National Treatment and Most Favoured Nation in the
context of intellectual property and investment disputes 137
Lukas Vanhonnaeker
8 Keep calm and carry on: lessons from the jurisprudence on fair and
equitable treatment and intellectual property rights 159
Bryan Mercurio
9 Intellectual property, investment and the World Trade Organization
(WTO): a historical account 182
Pratyush Nath Upreti
v
vi Research handbook on intellectual property and investment law
SECTION 2 INTELLECTUAL PROPERTY AND INVESTMENT
PROTECTION: THE IMPACT ON REGULATORY
POWERS AND PUBLIC POLICY
10 The intersection of ISDS and TRIPS flexibilities 207
Cynthia M. Ho
11 Public policy considerations in intellectual property-related international
investment arbitration 218
Simon Klopschinski
12 Investor-State Dispute Settlement and intellectual property: lessons from
Lilly v. Canada 250
Daniel Gervais
PART II ADJUDICATING INTELLECTUAL PROPERTY AND
INVESTMENT PROTECTION
SECTION 1 INTELLECTUAL PROPERTY, TRADE AND
INVESTMENT: COMPARED ENFORCEMENT
PROCEDURES AND THE FUTURE OF
INVESTOR-STATE DISPUTE SETTLEMENT
13 Jurisdictional overlaps in international intellectual property: challenges
arising from the proliferation of preferential trade agreements regulating
intellectual property rights 267
Xavier Seuba
14 Adjudicating intellectual property disputes at the GATT/WTO: are there
general lessons for the Investor-State Dispute Settlement system? 287
Graham Cook and Hannu Wager
15 Protecting fundamental values in international IP disputes: investor-state
vs. WTO adjudication 318
Rochelle Cooper Dreyfuss
16 Logo? No logo? The WTO dispute on plain packaging of tobacco, and beyond 339
Enrico Bonadio and Althaf Marsoof
17 Conceptual and institutional improvements to investor-state dispute settlement 366
Peter K. Yu
SECTION 2 ADDRESSING THE ROLE OF HUMAN RIGHTS AND
ETHICS IN INTELLECTUAL PROPERTY AND
INVESTMENT LITIGATION
18 The fundamental right to property and the protection of investment: how
difficult is it to repeal new intellectual property rights? 385
Martin Husovec
Contents vii
19 Human rights and intellectual property in investor to state dispute settlement 406
Tuomas Mylly
20 The protection of intellectual property and foreign direct investment: the
impact of equity 438
Thomas Cottier
SECTION 3 ADDRESSING THE EU AND NATIONAL LEGAL
FRAMEWORK AND ITS INTERACTIONS WITH
INTELLECTUAL PROPERTY AND INVESTMENT DISPUTES
21 The EU’s cumbersome investment law and policy, and its effects on the
protection of intellectual property rights 461
Szilárd Gáspár-Szilágyi
22 The compliance of investment protection mechanisms in Free Trade
Agreements with EU law 477
Rainer Geiger
23 Intellectual property in trade-related international agreements: a legal
analysis from the perspective of a Member State 492
Daniel Segoin
24 Regulatory and policy issues arising from intellectual property and
Investor-State Dispute Settlement in the EU: a closer look at the TTIP
and CETA 505
Christophe Geiger
Index 528
Tables
4.1 Textual provisions on expropriation in CETA, US Model Law and CPTPP 85
11.1 Comparison of IP, IIAs and WTO disputes 241
14.1 Dispute settlement cases in the area of TRIPS (as of 10 April 2019) 316
16.1 Key claims before the WTO 343
21.1 The main issues in EU investment law and their resolution 467
21.2 Competence over the EUSFTA 472
viii
Contributors
Enrico Bonadio, Senior Lecturer in Law, at City, University of London (UK)
Graham Cook, Counsellor in the Legal Affairs Division of the WTO Secretariat
Carlos Correa, Executive Director of the South Centre, Geneva (Switzerland)
Thomas Cottier, Emeritus Professor of European and International Economic Law and
Senior Research Fellow, World Trade Institute, University of Berne (Switzerland), Adjunct
Professor of Law, University of Ottawa (Canada)
Rochelle Cooper Dreyfuss, Pauline Newman Professor of Law, Co-Director, Engelberg
Center on Innovation Law and Policy, NYU School of Law (USA)
Susy Frankel, FRSNZ, Professor of Law, Chair in Intellectual Property and International
Trade, Victoria University of Wellington (New Zealand)
Szilárd Gáspár-Szilágyi, Lecturer, Keele University School of Law, and former Postdoctoral
Fellow, PluriCourts Centre for the Study of the Legitimate Roles of the Judiciary in the Global
Order, University of Oslo (Norway)
Christophe Geiger, Professor of Law and Director of the Research Department of the CEIPI,
University of Strasbourg (France)
Rainer Geiger, Attorney-at-law and Former Associate Professor at the University of Paris I
(Panthéon/Sorbonne) (France)
Daniel Gervais, Milton R. Underwood Chair in Law at Vanderbilt University (USA), Director
of the Vanderbilt Intellectual Property Program and Professor of Information Law, in par-
ticular trade and investment related aspects of the information society, of the University of
Amsterdam (Netherlands)
Henning Grosse Ruse-Khan, Reader in International and European Intellectual Property
Law at the University of Cambridge, King’s College and External Research Fellow at the Max
Planck Institute for Innovation and Competition, Munich (Germany)
Cynthia M. Ho, Clifford E. Vickrey Research Professor and Director of the Intellectual
Property Program at Loyola University of Chicago School of Law (USA)
Martin Husovec, Assistant Professor at Tilburg University (Netherlands) (appointed jointly
by Tilburg Institute for Law, Technology and Society & Tilburg Law and Economics Center)
and Affiliate Scholar at Stanford Law School’s Center for Internet & Society (CIS) (USA)
Simon Klopschinski, Attorney-at-Law at rospatt osten pross Intellectual Property
Rechtsanwälte PartG mbB (Germany)
Althaf Marsoof, Assistant Professor of Law, Nanyang Business School, Nanyang
Technological University (Singapore)
ix