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The Extraterritorial Enforcement of IPR Rulings: Coming Soon?
07 June 2019
This 4iP Council briefing paper highlights areas of concern in relation to the Convention on the Recognition and Enforcement of Foreign Judgements in Civil or Commercial Matters proposed by the Hague Conference on International Law (HCCH).
The Hague Conference on International Law (HCCH), is an intergovernmental organisation made up of 82-member countries, that drafts and administers private international law conventions. The HCCH has drafted a Convention on the Recognition and Enforcement of Foreign Judgements in Civil or Commercial Matters that, once ratified, would require courts in signatory states to enforce relevant judgements from each others’ courts, without the need for separate proceedings on the substance.
A HCCH Diplomatic session on 18 June-2 July 2019 aims to adopt the draft convention. One of the outstanding and contentious questions, that will go before the Diplomatic session, is whether intellectual property rights or analogous rights should fall within the scope of the new Convention and therefore be eligible for recognition and enforcement. The draft Convention does not specifically list the rights covered but these can be expected to include both registered patents, trademarks, designs, copyrights or related rights, geographic indications and utility models, as well as unregistered rights.
Essentially, the draft proposes that the judgement of a competent court (i.e. one in which has jurisdiction to rule on validity and infringement of the IPR in the jurisdiction in which it was granted) can be enforced elsewhere, without the need for new proceedings on the merits. It does not allow, explicitly, for a court to rule on validity or infringement of a right granted in another jurisdiction. Therefore, it appears that the IPR-related judgements only relate to those IPRs where the home court has jurisdiction (i.e. were granted in that jurisdiction) and only those elements of the judgement can be enforced in the third country.
Despite these safeguards, and given the complexity of the different IPR regimes, the impact of the draft Convention could be serious. There are 3 main areas of concern:
- Unresolved questions
- Lack of Clarity or Legal Certainty
- Points of Principle
Read and download a copy of the full brief here.
4iP Council would be interested to hear from companies and associations if they have empirical data on the potential impact on the extension of the convention to IPRs.
 The 82 countries include the major economic and political powers (essentially excluding Africa, the Middle East and Southeast Asia) and therefore the major patent jurisdictions.
 The details of the scope and applicability of the Convention can be found at https://assets.hcch.net/docs/9faf15e1-9c36-4e57-8d56-12a7d895faac.pdf.
 In that context, it should be noted that the draft Convention does not cover determinations by administrative bodies but whether quasi-judicial bodies such as boards of appeal are included is under discussion.
 For example see the statement by BusinessEurope before the European Parliament in April 2018 at http://www.europarl.europa.eu/cmsdata/142123/juri-hearing-judgments-project-konteas.pdf; the position of the UK IP Federation at http://www.ipfederation.com/document_download.php?id=4103; or the position of the American Chamber of Commerce to the EU at https://www.amchameu.eu/system/files/position_papers/position_hague_convention_and_ip_final.pd.
 See e.g. Long, Cheryl & Wang, Jun. (2015). Local Judicial Protectionism in China: An Empirical Study of IP Cases. International Review of Law and Economics. 42. 10.1016/j.irle.2014.12.003.
 See Report on the protection and enforcement of intellectual property rights in third countries, Commission Staff Working Document, 21.2.2018 SWD(2018) 47 final.
 “China preserves its domestic markets for its champions, shielding them from competition through .. the favouring of domestic operators in the protection and enforcement of intellectual property rights and other domestic laws...” European Commission, EU-China – A strategic outlook, Joint Communication To The European Parliament, The European Council And The Council, JOIN(2019) 5 final, 12 March 2019. Available at https://ec.europa.eu/commission/sites/beta-political/files/communication-eu-china-a-strategic-outlook.pdf.
 See footnote 4.