Book Review: Intellectual Property Objectives in International Investment Agreements

This Kat is happy to share with our readers her review of “Intellectual Property Objectives in International Investment Agreements”, authored by Pratyush Nath Upreti (Edward Elgar Publishing, 2022, 284 pp.). The book addresses a pressing issue at the intersection of intellectual property (IP) and investment law: how shall IP rights be treated in investor-state dispute settlement? Upreti offers his answers with a focus on societal objectives of IP rights.

After an introductory Chapter 1, Upreti follows with Chapter 2. Here, he retraces social objectives of international IP law. Societal objectives (as opposed to economic ones) aim at achieving a fairer regime of intellectual property, which respects the interests of all societal groups. After discussing the Paris Convention and the Berne Convention, the author analyses the underlying societal objectives of Arts. 7 and 8 TRIPS Agreement.

Chapter 3 continues with a discussion of whether property can always be considered an investment and thus be protected under investment law. To this end, Upreti introduces the reader to absolute and relative standards of investment protection. He then addresses two absolute standards, expropriation, and fair and equitable treatment (FET), as the most relevant for IP-related arbitration. Inter alia, Upreti looks into how FET standard safeguards investors from denial of justice and protects their legitimate expectations.

In Chapter 4, Upreti focuses on IP as a possible investment asset. IP rights cannot automatically be equated with investment. Thus, Upreti discusses the applicability to IP of various criteria to define investment that had been established by arbitral tribunals (mainly the Salini test). He then looks into recent international investment agreements (IIAs), such as the EU/Canada Comprehensive Economic and Trade Agreement (CETA), to see how the Salini criteria are reflected in the texts of these IIAs.

Chapter 5 addresses the role of the national and international IP regimes in defining IP as investment. Investment tribunals regularly apply and interpret national laws and international agreements. Upreti first discusses the role of national law in such major IP-related ISDS case, Philip Morris v Uruguay, Eli Lilly v Canada, Bridgestone v Panama, and Einarsson v Canada [also commented by The IPKat here and here]. He then suggests four approaches as to how social objectives from international IP law should be integrated into investment arbitration.

Chapter 6 discusses the relationship between domestic courts and investment tribunals. While investment disputes are a useful tool to counter such acts as corruption by national courts, they can also be instrumentalised by investors who are dissatisfied with the results of national litigation. In fact, several investment disputes over IP rights reached investment tribunals after adjudication by domestic courts.

Upreti first addresses the implications of such cases. He then analyses the EU/Canada CETA, which specifically tackles the issue of judicial sovereignty and investment arbitration. Upreti concludes that CETA offers sufficient safeguards to protect national judicial sovereignty.

The cornerstone of Upreti’s book is Chapter 7. Here, the author discusses whether the new generation of IIAs need IP-specific exceptions. Upreti first undertakes a quantitative analysis of all IIAs signed and in force between 2010 and 2019. This allows him to discern general trends in regulating exceptions for IP rights.

He then addresses more recent IIAs, such as the EU/Canada CETA and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). Upreti believes that IP-specific exceptions should be included in IIAs, so as to achieve a greater predictability in investment arbitration and safeguard IP societal objectives.

As Upreti mentions in Chapter 5, many countries are now rethinking their approach to IIAs. The most prominent example is the EU, which is currently pushing for the creation of the Multilateral Investment Court. In this light, publications like the one reviewed in this post, enables policy-makers, practitioners and academics to critically asses how new IIAs should address IP.

And while you are digesting this view of Upreti’s book, do not forget to vote for your favourite books in the IPKat book of the year award. You have until 13th January 2023.

Published: 2022

Format: Hardback

Extent: 284 pp.
ISBN: 978 1 80220 420 9