Home / Issues / Volume 10, Number 2 / Transcending Territoriality: International Cooperation and Harmonization in Intellectual Property Enforcement & Dispute Resolution
Transcending Territoriality: International Cooperation and Harmonization in Intellectual Property Enforcement & Dispute Resolution
By Alexandra George | Article | 10 Tsinghua China L. Rev. 225 (2018) | Download Full Article PDF

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, 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 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, 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.

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. 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 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.
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