When Private International Law Meets Intellectual Property Law: A Guide for Judges

Author:Annabelle Bennett - Sam Granata
Position:Former Judge, Federal Court of Australia, Sydney, Australia - Judge, Court of Appeal, Antwerp, Belgium, and Benelux Court of Justice, Luxembourg
SUMMARY

In the modern economy, market transactions have become more complex, value chains have become more global and the movement of intangible capital, such as intellectual property (IP)-protected technology, designs, brands and creative works, has become more mobile.

 
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In this context, court cases relating to the infringement of IP rights covering goods and services that are global in their use can have an impact worldwide. While IP rights apply within territorial boundaries, the interconnected nature of the modern economy means that judges tasked with disputes relating to IP rights are ever more frequently finding themselves at the crossroads of IP law and private international law, which concerns relations between private parties across national borders.

Take, for example, the following scenario:

Company A and Company B, with headquarters in Belgium and Australia respectively, enter into a license agreement regarding the distribution of the goods produced using a technology patented by Company A in Belgium and Australia. The license is governed by the law of Belgium. A dispute over an alleged breach of the license arises and Company A initiates a court proceeding in Belgium, where it has its headquarters. Instead of, or as well as, bringing claims under the license agreement, Company A claims patent infringement by Company B in Belgium and Australia. Company B counterclaims that Company A’s patents in both countries are invalid.

Confronted with this case, judges may first hope that parties settle before either of them has to decide, but if there is no willingness to settle, the judges will face questions of private international law.

The increasing relevance of private international law

Private international law becomes more relevant when facing the challenges unearthed by the heightened mobility of IP and the globalized nature of commercial dealings. This intersection between IP and private international law has attracted considerable academic and judicial attention, as it raises important questions about which court has jurisdiction to adjudicate cross-border disputes on IP, which law is to be applied, and whether foreign IP-related judgments can be recognized and enforced.

Recognizing the need to support the work of judges and lawyers around the world in navigating these issues, WIPO and the Hague Conference on Private International Law (HCCH) joined ranks to develop a practical guide on IP and private international law by judges, for judges.

A guide for judges by judges

When Private International Law Meets Intellectual Property Law: A Guide for Judges, provides experts who specialize in one of the two fields of law with a reliable overview of how these fields intertwine. In writing the guide, we do...

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