The enforcement of intellectual property (IP) rights abroad has remained a concern for investors since the adoption of the Paris Convention for the Protection of Industrial Property in 1883. The main reason is that the international IP regime has never given IP rights an autonomous meaning that prevails over the meaning of national laws. The relatively recent proliferation of international investment agreements, including bilateral investment treaties (BITs), has offered an opportunity for IP right-holders to attempt to strengthen their rights vis-à-vis domestic legislation via international investment arbitration (IIA) and reduce domestic flexibility.
As discussed herein, a central issue when litigating IP rights through IIA is to determine the nature and scope of the rights accorded to investors under domestic law. Investors consider that the owner of an IP right should be free to use it unconstrained by domestic regulations. By contrast, host States believe that IP rights essentially grant the right to exclude others from the use of the right, but do not grant an absolute right vis-à-vis the regulatory power of the State. For purposes of this article, we were asked to focus our analysis on two recent cases relating to IP rights: Phillips-Morris v. Uruguay and Apotex v. United States and the multiple issues that they raise, including the nature and level of reparation available to IP investors under applicable principles of international law.