Abstract
The recent surge of multijurisdictional IP disputes and the increase in non-binding soft laws have made scholars cast doubt on the sustainability of public international law and the validity of the current IP legal system. Private lawyers may now think that they do not have to pay keen attention to public international law any longer when providing legal advice to their clients, particularly MNCs. This study makes a concise description of today’s legal environment in the field of IP, focusing on the emerging legal norms of transnational law, particularly in the context of its interplay with public international law. With respect to this, the ongoing and even heightened roles of public international law will be discussed. Finally, a typology is suggested using exponents to express the intensity of State sovereignty to facilitate understanding of the relationship between public international law and other categories of law.
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Notes
- 1.
Larry (2016).
- 2.
See infra. Chapter III.C.6.
- 3.
Key concepts that have been discussed along with transnational law include “lex mecatoria,” “international constitutionalism,” “legal pluralism,” etc. For details, see. Peer (2012).
- 4.
- 5.
For a factual background of this concept, see. Sung-Pil (2014).
- 6.
- 7.
See, e.g., The American Law Institute (2008).
- 8.
See supra note 5.
- 9.
Harold (1994). So, Berman suggests “world law” as the alternative to international law.
- 10.
Supra note 3 at 308–309.
- 11.
Detlev (1970).
- 12.
Paul (2005).
- 13.
Philip (1956).
- 14.
Ibid. at 2. Jessup’s transnational law is quite a broad concept including public international law, private international law, and other rules that do not fall into those two categories. In this article, the author uses the term in rather a narrower sense to cover the last category, whose rules do not fit into either public international law or private international law.
- 15.
Ibid. at 2.
- 16.
See, e.g., Lawrence (1996).
- 17.
Supra note 3 at 306–310.
- 18.
Ibid. at 308.
- 19.
- 20.
See, e.g., Gralf-Peter and Moritz (2009).
- 21.
Examples of the most influential SSOs operating worldwide are as follows: International Telecommunication Union (“ITU”), International Organization for Standardization (“ISO”), International Electrotechnical Commission (“IEC”), Institute of Electrical and Electronics Engineers Standard Association (“IEEE-SA”), etc. In addition to the international SSOs, there exist numerous regional and national SSOs around the globe.
- 22.
These patented technologies should be used by others in compliance with the established standards. Thus, the owners of SEPs may be placed in a more advantageous position by standardization.
- 23.
The FRAND commitment suggests that the owner of a SEP would not discriminate other companies by imposing unfair or unreasonable licensing terms on them. Thus, the legal status of SEPs is achieved in return for the commitment to the FRAND terms.
- 24.
National courts will find a plaintiff’s breach of the FRAND commitment if, e.g., the plaintiff asked for unreasonably high royalty rates to the defendant.
- 25.
This group of IP litigations are referred to as the multijurisdictional IP disputes in this article.
- 26.
Supra note 6.
- 27.
For reviewing such scholarly attempts, see Jaemin (2012); supra note 5.
- 28.
See infra III.C.
- 29.
Supra note 3 at 310.
- 30.
Convention on the Recognition and Enforcement of Foreign Arbitral Awards (1958). It has 156 States Parties.
- 31.
See Merriam-Webster’s Legal Definition (2016) http://www.merriam-webster.com.
- 32.
Ibid.
- 33.
This is because States do not have to be barred by such a divide in their legislation and enforcement of laws. Actually, a State can decide public or private nature of a law to regulate specific subject matters. Today, many laws are in fact in a hybrid form, i.e., a one that contains both a public and private nature. E.g., a patent law in any jurisdiction may deal with individual applicants’ relationship with the State (more precisely patent offices) and provide all procedural rules for patent prosecution. At the same time, a patent law defines the infringement of patent, which is a typical private law issue.
- 34.
Ademola (2012). States and international organizations are the subjects of public international law, and its subject matters are those legal issues stemming out of the relationship among these subjects. However, this public “international” law differs from public “domestic” law in two aspects. First, the former generally excludes individuals, either natural persons or corporations, while the latter includes legal issues where at least one party is the State. Second, the former has no centralized legislative authority, while the latter has the State.
- 35.
Ibid. at 8.
- 36.
Ibid. In the context of international transaction, this conflict of laws issue actually includes both “choice of law” issues and “choice of jurisdiction” or “choice of court” issues. Private lawyers should face in finalizing every international agreement.
- 37.
This term “private international law” is now understood by the international law community as “conflict of laws.” Criticism on such an inappropriate nomenclature is found in the work of Alf Ross earlier in 1947. He commented on the term as: “Normally it is both hopeless and inadvisable to try to alter a generally accepted terminology, but in this case linguistic usage is so misleading that it seems to me right to make the attempt. For private international law is neither private nor international.” See Alf (1947). So, Ross used an alternative term “interlegal law” rather than this misleading term “private international law.”
- 38.
- 39.
For details on these two approaches, see supra note 5.
- 40.
Robert Jennings and Arthur Watts actually envisioned integration of public and private international laws by embodying private international law rules in treaties. See Ademola, supra note 34 at 8–9.
- 41.
However, this hierarchy does not mean that effect of domestic law, including constitution and statutes, is in general subject to that of public international law. The hierarchy is suggested in this article just in order to emphasize coordinating roles of public international law. The sovereignty of a State is sort of a sui generis and not originated from public international law. On the contrary, the sovereignty of each State form a basis of the legal effect of public international law. For details on the relationship between public international law and municipal law, see von Bogdandy (2008).
- 42.
This actually happens when a least developed country adopts laws by explicitly copying those of advanced countries.
- 43.
One of the best known examples is the less developed countries’ rejection of the WTO Agreement not to hand over their State authority to developed countries. For details, see supra note 5.
- 44.
Of course, not all provisions of public international law proposed for harmonization have to be found in each domestic law. The results of such harmonization, i.e., harmonized domestic laws, may be expressed as “S1 is approximately equal to S’1 [S1 ≒ S’1],” considering that domestic laws, even after experiencing harmonization of core provisions, may have non-core provisions that are different from each other.
- 45.
Harmonization can be achieved through each State’s legislative efforts which can sometimes be pushed by public international law, such as TRIPs and Free Trade Agreements (“FTAs”). If a State resists harmonization, it is not easy to enforce such changes in the domestic law due to its sovereignty.
- 46.
Suzanne (2003).
- 47.
John et al. (2010). However, this treaty is silent about harmonization of procedural rules, e.g., those for patent prosecution process.
- 48.
For details, see John (2009).
- 49.
D. Kappos, former director of the US Patent and Trademark Office once explained the background of this changed attitude of developed countries. See David (2010).
- 50.
World Intellectual Property Organization (1970).
- 51.
Supra note 47 at 22.
- 52.
WIPO, ISA and IPEA Agreements. http://www.wipo.int/pct/en/access/isa_ipea_agreements.html.
- 53.
WTO Intellectual property: protection and enforcement. https://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm.
- 54.
The WTO asserts in its website that IP protection will ultimately benefit society as a whole. See ibid. But most LDCs may consider IP protection as hindrance to the development of their economies.
- 55.
For MNCs and other private patent applicants, it is an expensive and time-consuming job to go through patent prosecution processes in local patent offices where their businesses reside.
- 56.
WIPO (1883). Article 4 of the Convention grants 12 months for patents and utility models, and 6 months for industrial designs and trademarks as priority periods. The period starts from the filing date of the first application. The filing date, however, is not included in the priority period.
- 57.
It is not about one unitary patent, or about a unified patent prosecution system for its member countries. The PCT process is in fact divided into the international and the national phase, but only the former is an “international” process, while the latter is still “domestic.”.
- 58.
European Patent Office, The European Patent Convention. https://www.epo.org/law-practice/legal-texts/epc.html.
- 59.
European Patent Office, Services & Activities. https://www.epo.org/about-us/services-and-activities/services.html.
- 60.
European Patent Office (2014).
- 61.
WIPO (2014).
- 62.
For details on the Berne Convention, see supra note 5 at 360–1. See also WIPO (1886).
- 63.
Surge of multijurisdictional copyright disputes can also be conceivable due to the huge volume of digital contents and ever-advancing technologies for their creation and delivery.
- 64.
To deal with an infringement of a patent, the patent holder may want to, and have to select the laws and courts of a State where the patent is registered.
- 65.
HCCH (1955).
- 66.
HCCH (2005).
- 67.
Supra note 7. Such a motivation Statement is found in the foreword and the reporters’ memorandum sections of the proposal. For details on the ALI proposal, see supra note, 5 at 366–70.
- 68.
Supra note 7. However, the ALI proposal has not been promoted to the level of public international law.
- 69.
It is the purpose of the ALI Proposal. See supra note 5.
- 70.
For details on the ETJ, see Harold (1982).
- 71.
Currently four international tribunals remain active with global scope, i.e., the International Court of Justice, the International Criminal Court, the International Tribunal for the Law of the Sea, and the Appellate Body of the WTO, while there are many other international tribunals whose regional and substantive scopes are limited.
- 72.
- 73.
For details on the unitary patent and the UPC, see European Patent Office (2016). In this regard, the unitary patent and the UPC may potentially become more effective patent prosecution and enforcement mechanisms than those proposed by the ALI. However, more legislative efforts need to be made before this new European patent system could come into operation due to the UK’s vote on June 23, 2016 to leave the EU (so-called the ‘Brexit’). For details, see Aisling (2018).
- 74.
European Patent Office (2016). The unitary patent granted by the EPO will have unitary effect in all member States. See Ibid.
- 75.
Unified Patent Court–FAQ on the Unified Patent Court. epo.org/mobile/applying/european/unitary/upc/upc-faq.html.
- 76.
Ibid.
- 77.
Ibid.
- 78.
It is different from the ETJ mechanism in that the jurisdictional power and enforcement authority are fully institutionalized by the establishment of the unified court system, while the ETJ needs to be maintained by the courts in different jurisdictions. Of course, one may label such a unified court system as an extreme case of the ETJ.
- 79.
See WIPO Mag (2016).
- 80.
In an interview with the WIPO Magazine, the Director General mentioned: “The international community can decide to do something through a resolution or decision of one of WIPO’s constituent bodies (e.g. the WIPO General Assembly). While such arrangements are generally not binding in the strict legal sense unless adopted in the form of a treaty to which a State accedes formally, they can advance internationally agreed goals.” See ibid.
- 81.
For the discussions on legal pluralism, see supra note 3.
- 82.
Supra note 79.
- 83.
Ibid.
- 84.
Ibid. The Paris Convention and the Berne Convention in a sense predicted the emergence of transnational laws. But these foundational treaties of international IP system also stipulated that such transnational laws should be made compatible with each convention.
- 85.
In other words, public international law decides on the metes and bounds of transnational laws whose boundary is inherently unclear.
- 86.
One may label this role as the “anchoring effect” of public international law considering that its rules hinder transnational laws not to deviate too much from their mother law.
- 87.
See supra II.A.
- 88.
Herwig (2013).
- 89.
Ibid.
- 90.
For details, see Regan & Hall, supra note 4.
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Park, S.P. (2023). The Coordinating Role of Public International Law: Observations in the Field of Intellectual Property. In: Lee, E.Y.J. (eds) Revolutionary Approach to International Law. International Law in Asia. Springer, Singapore. https://doi.org/10.1007/978-981-19-7967-5_10
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