Litigating Intellectual Property Rights in Investor-State Arbitration: From Plain Packaging to Patent Revocation

Enforcing intellectual property rights abroad is difficult. International treaties have generally not created directly enforceable IP rights. Usually, the protection they confer cannot be directly invoked in national courts. Because of the territorial nature of IP protection, right holders must proceed in local courts based on local laws. Litigating IP rights abroad hence faces several hurdles. International investment law offers some options to overcome these hurdles: It commonly includes IP rights in its protection for foreign investments against government interference. Often, investors can directly challenge host state measures in international arbitration proceedings. Relying on investment standards offers an alternative mechanism to protect IP rights abroad and is increasingly used to challenge the host state’s compliance with international IP treaties. However, arbitrators have on occasion denied their competence to rule on alleged breaches of an international IP agreement. This article focusses on the investment interface aspect of IP: Compared to domestic proceedings (where international standards usually cannot be invoked), WTO dispute settlement (where right holders have no legal standing), and the protection of property under human rights instruments (where protection is limited to specific human rights standards), investor-state arbitration may be the only forum where right holders can litigate international IP norms such as the TRIPS Agreement. This may have significant effects on the autonomy of host states in responding to public interest concerns (such as access to medicines or reducing smoking) once measures affect IP rights of foreign investors. Reviewing the options for litigating international IP norms in investment disputes, I conclude that most routes pursued by right holders are unlikely to be successful. Ironically, it is only clauses in investment treaties which aim to safeguard flexibilities in the international IP system that are likely to open a door for challenging compliance with international IP obligations in investor-state arbitration