
Contents
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A. IP as Covered ‘Investments’ in IIAs—an Overview A. IP as Covered ‘Investments’ in IIAs—an Overview
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B. Jurisdictional Proof B. Jurisdictional Proof
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C. Treaty Practice for IP as Investment C. Treaty Practice for IP as Investment
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1. The term ‘investment’ 1. The term ‘investment’
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2. The term ‘intellectual property’ within the definition of investment 2. The term ‘intellectual property’ within the definition of investment
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D. IP as Investment under Article 25.1 of the ICSID Convention D. IP as Investment under Article 25.1 of the ICSID Convention
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E. Role of National Law in Determining IPRs as an Investment E. Role of National Law in Determining IPRs as an Investment
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1. Public international law and private proprietary rights 1. Public international law and private proprietary rights
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2. Role of national law in defining legal rights underpinning investments 2. Role of national law in defining legal rights underpinning investments
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3. National law and IP-based investments 3. National law and IP-based investments
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4. Dissenting view 4. Dissenting view
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5. Specific reference to national law in IIAs 5. Specific reference to national law in IIAs
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6. Insufficient attention to national law 6. Insufficient attention to national law
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7. Decisions of national authorities 7. Decisions of national authorities
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8. Limits to the role of national law 8. Limits to the role of national law
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9. The harmonizing role of international IP law 9. The harmonizing role of international IP law
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10. Do BITs require the enactment of new national IP laws? 10. Do BITs require the enactment of new national IP laws?
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11. Applications for IP rights as protected investment under IIAs 11. Applications for IP rights as protected investment under IIAs
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F. Review of Initial IP-Based ISDS Cases Analysing Investment F. Review of Initial IP-Based ISDS Cases Analysing Investment
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1. Trademarks 1. Trademarks
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(a) Bridgestone v. Panama (a) Bridgestone v. Panama
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(b) Philip Morris v. Uruguay (b) Philip Morris v. Uruguay
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2. Copyright—Einarsson v. Canada 2. Copyright—Einarsson v. Canada
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4 Intellectual Property as Investment
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Published:December 2020
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Abstract
This chapter examines under what circumstances intellectual property (IP) rights constitute a covered investment entitled to protection under international investment law. It addresses the pivotal role played by the domestic IP law of the host state, as well as any choice of law issues. Based on the overarching notion of territoriality and host state’s law in determining which economic assets—particularly intangibles—are afforded legal protection, the book’s thesis is that only intellectual property rights recognized in the host state’s domestic legal order may constitute an investment within the meaning of an international investment agreement (IIA). The chapter then explores evolving treaty practice concerning the definition of ‘investment’ as it relates to intellectual property. The reference to intellectual property in IIAs as a form of asset or property that may qualify as a protected investment is long-standing and consistent in investment law treaty practice. The chapter also assesses whether IIAs can oblige contracting states to introduce new IP rights into their domestic legal orders if those rights are referenced as investments in the IIA.
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