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HCCH-WIPO Report on Identifying Actual and Practical Issues of Private International Law in Cross-Border Intellectual Property Dealings

The intersection of private international law (PIL) and intellectual property (IP) has continued to be explored in different regions and at various levels. The Hague Conference on Private International Law (HCCH), a global organization mandated to work for the progressive unification of the rules of private international law, has dealt with this intersection in various of its instruments and projects, such as the HCCH Convention of 30 June 2005 on Choice of Court Agreements and the HCCH Principles on Choice of Law in International Commercial Contracts (adopted on 19 March 2015). In particular, in the negotiations leading to the successful adoption of the HCCH Convention of 2 July 2019 on the Recognition and Enforcement of Foreign Judgments in Civil or Commercial Matters, the treatment of IP-related judgments was discussed intensively and significant work has been devoted to this important topic.

The World Intellectual Property Organization (WIPO) is the global forum for intellectual property services, policy, information and cooperation. WIPO has worked to raise awareness of the issues arising in the intersection between IP and PIL, including through an empirical study of 56 cases dealing with cross-border online IP infringement.

The HCCH and WIPO Secretariats have jointly published When Private International Law meets Intellectual Property – A Guide to Judges (Guide), written by A. Bennett and S. Granata, in 2019. The Guide, which is available in the six United Nations languages and aims to raise awareness of the interplay of PIL and IP within the legal society, provides judges and practitioners with an overview on how PIL issues may apply in cross-border IP cases.

In considering whether, and if so how, work on the intersection of PIL and IP should be further explored and developed by the HCCH, its governing body, i.e., the Council on General Affairs and Policy (CGAP), at its meeting in March 2020, “invited the Permanent Bureau to continue its close cooperation with the International Bureau of WIPO, including on the preparation of a questionnaire, with a view to identifying actual and practical issues of private international law faced by practitioners in cross-border intellectual property dealings.”

It is against this background that the Secretariats of HCCH and WIPO, in consultation with a selected number of experts, undertook a survey in June 2021 to identify actual and practical PIL issues in IP disputes, namely in establishing court jurisdiction, determining and applying the applicable law, recognizing or enforcing foreign IP-related judgments, and where relevant, administrative and judicial cooperation. The Questionnaire was intended to be limited IP disputes before courts only, and for a wide scope of consultation, including Members of both Organizations, institutions, practitioners, in-house counsel, academics and other private individuals.

The responses received are compiled and analyzed in this HCCH-WIPO Report on Identifying Actual and Practical Issues of Private International Law in Cross-Border Intellectual Property Dealings.