Protection of IP Rights as an Investment

Year 2024, Volume: 73 Issue: 2, 1255 - 1292, 07.08.2024

Banu Fatma Günarslan

https://doi.org/10.33629/auhfd.1335404

Abstract

Intellectual property (IP) rights are embedded as an asset under the definition of investment in most international investment agreements. These agreements ensure protection and promotion of investment. Where IP rights are treated as an investment, they do benefit from the protection standards afforded by the international investment agreements. However, it is highly debated that to what extent an IP right constitutes an investment. Does the inclusion of IP rights under the investment definition of agreement suffice to be qualified as an investment? Or are there any other requirements? Over the last few years, these questions have attracted considerable scholarly interest.
This article aims to analyse protection of IP rights as an investment and legal issues deriving from intersection between IP law and international investment law. Accordingly, it will attempt to answer the question as to when IP rights constitute an investment. In this sense, the article will initially discuss the inclusion of IP rights under the definition of investment afforded by several investment agreements. Subsequently, protection of IP rights in ICSID Convention will be discussed critically. Thirdly, the article will try to underscore the roles of international investment law and domestic law in determining whether an IP right is investment.

Keywords

IP rights, international investment agreement, ICSID Convention, trademark, patent

Protection of IP Rights as an Investment

Abstract

Intellectual property (IP) rights are embedded as an asset under the definition of investment in most international investment agreements. These agreements are treaties between countries that ensure protection and promotion of investment. Where IP rights are treated as an investment, they do benefit from the protection standards afforded by the international investment agreements. However, it is highly debated that to what extent an IP right constitutes an investment under international investment law. Does the inclusion of IP rights under the investment definition of agreement suffice to be qualified as an investment? Or are there any other requirements needed to be satisfied? Over the last few years, these questions have attracted considerable scholarly interest.
This article aims to analyse protection of IP rights as an investment and legal issues deriving from intersection between IP law and international investment law. Accordingly, it will attempt to answer the question as to when IP rights constitute an investment. In this sense, the article will initially discuss the inclusion of IP rights under the definition of investment afforded by several investment agreements. Subsequently, protection of IP rights in ICSID Convention will be discussed critically. Thirdly, the article will try to underscore the roles of international investment law and domestic law in determining whether an IP right is investment.

Keywords

IP rights, international investment agreement, ICSID Convention, trademark, patent

References

• Baker, Brook, and Katrina Geddes. “The Incredible Shrinking Victory: Eli Lilly v. Canada, Success, Judicial Reversal, and Continuing Threats from Pharmaceutical ISDS.” Loyola University Chicago Law Journal 49 (2017): 479-513.
• Biadleng, Ermias Tekeste. “IP Rights under Investment Agreements: The TRIPs-plus Implications for Enforcement and Protection of Public Interest.” South Centre, Research Papers No. 8 (2006).
• Blackaby, Nigel, Constantine Partasides, Alan Redfern, and Martin Hunter. Redfern and Hunter on International Arbitration. Sixth Edition. Oxford: Oxford University Press, 2015.
• Bozgeyik, Hayri. “Tescilli Markanın Kullanılması ve Kullanmamaya Bağlı Sonuçlar.” In Prof. Dr. Fırat Öztan’a Armağan, Cilt I-II, Cilt I, 457-479. Ankara: Turhan, 2010.
• Chaisse, Julien, and Puneeth Nagaraj. “Changing Lanes: Intellectual Property Rights, Trade and Investment.” Hastings International and Comparative Law Review 37, no 2 (2014): 223-270.
• Correa, Carlos. “Intellectual Property as Protected Investment: Redefining the Reach of Investors’ Rights.” In Research Handbook on Intellectual Property and Investment Law, edited by Christophe Geiger, 120-136. Cheltenham, Northampton: Edward Elgar Publishing, 2020.
• Correa, Carlos M. “Investment Protection in Bilateral and Free Trade Agreements: Implications for the Granting of Compulsory Licenses.” Michigan Journal of International Law 26, no. 1 (2004): 331-354.
• Correa, Carlos, and Jorge E Viñuales. “Intellectual Property Rights as Protected Investment: How Open are the Gates?” Journal of International Economic Law 19, no. 1 (2016): 91-120.
• Çolak, Uğur. Türk Marka Hukuku. İstanbul: On İki Levha Yayıncılık, 2012.
• Dinev, Plamen. “Regulatory Chill and the TTIP: An Intellectual Property Perspective.” European Intellectual Property Review 39, no. 6 (2017): 344-349.
• Dreyfuss, Rochelle, and Susy Frankel. “From Incentive to Commodity to Asset: How International Law is Reconceptualizing Intellectual Property.” Michigan Journal of International Law 36, no. 4 (2015): 557-602.
• Frankel, Susy. “Interpreting the Overlap of International Investment and Intellectual Property Law.” Journal of International Economic Law 19, no. 1 (2016): 121-144.
• Pakistan and Federal Republic of Germany Treaty for the Promotion and Protection of Investments (with Protocol and exchange of notes) (25.11.1959).
• Treaty Between the Federal Republic of Germany and ____ Concerning the Encouragement and Reciprocal Protection of Investments.
• Treaty between the United States of America and Jamaica Concerning the Reciprocal Encouragement and Protection of Investment, signed 4 February 1994, entered into force 7 March 1997.
• Treaty between the United States of America and Mongolia Concerning the Encouragement and Reciprocal Protection of Investment.
• Treaty Between the Government of the United States of America and the Government of the Republic of Rwanda Concerning the Encouragement and Reciprocal Protection of Investment (19.02.2008).
• Treaty Between the Government of the United States of America and the Government of the State of Bahrain Concerning the Encouragement and Reciprocal Protection of Investment, signed at Washington on 29 September 1999, entered into force 30 May 2001.
• Treaty between the United States of America and the Oriental Republic of Uruguay Concerning the Encouragement and Reciprocal Protection of Investments.