Originally from the American Review of International Arbitration (ARIA)

INTRODUCTION

Intellectual property (IP) systems perform exceptionally when enforcement mechanisms are fair, legitimate and able to understand the “balance” struck in the IP system. A proper institutional framework for enforcement of intellectual property rights (IPRs) would enable the IP system to maximize economic and social welfare. That said, sometimes the law enforcement system determines “winners” of the market and if there are no principles or mechanisms to achieve a balance between private and public aspects of IPRs, then the winner takes all, resulting in more litigation.  No doubt many of us will agree that IP is a form of government intervention in the market with an aim to achieve a desirable social end—encouraging innovation and creation.  Therefore, with this mindset, the owners of IP and users turn to national courts and IP offices to resolve disputes or interpret provisions to ensure clarification of the law. However, at the international level, states employ the World Trade Organization (“WTO”) dispute settlement mechanism  to seek clarification on the Agreement on Trade-Related Aspects of Intellectual Property (“TRIPS”)  provision and obligations. Besides national mechanisms and WTO dispute settlement, it is quite unheard of to use any other adjudicating forum for IP owners to enforce their rights.

Until recently, few high-profile cases demonstrated an alternative forum in the making that would potentially enable IP owners to enforce their rights. This forum is known as investor-state dispute settlement (ISDS), an ad hoc investment tribunal governed by the International Center for Settlement of Investment Disputes (ICSID) Convention.  The objective of this article is to examine the recent high-profile cases in which IPRs are sought to be protected by means of international investment law and treaties.

To meet this stated purpose, this article is divided into three further main parts. The first part (section I) provides general background on the relationship between IP and investment law, followed by a succinct review of cases where IPRs featured directly or indirectly in claims before investment arbitration. The second part (section II) mainly discusses IP-related disputes in ISDS. The second part is further divided into five sub-parts that focus on three high-profile cases—Philip Morris v. Uruguay,  Eli Lilly v. Canada,  and Bridgestone v. Panama —and broadly analyze the important findings of these cases. The last part (section III) discusses competing views on IP-ISDS interactions post these three awards and emerging issues and challenges related to IP-ISDS.