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Intellectual Property Rights in International Investment Agreements

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Abstract

Despite the extensive scholarship which exists on international investment law and intellectual property law, the study of the interaction of these two regimes has been burgeoning only recently. In particular, despite the inclusion of intellectual property rights (IPRs) under the definition of “investment” in the vast majority of international investment agreements (IIAs), thus extending the application of international investment law’s traditional standards of protection to these intangible assets, many questions are still being raised as a consequence of the specific characteristics of IPRs. These questions have been brought to the fore by highly mediatized investment cases involving major multinational corporations in the tobacco and pharmaceutical industries. Yet, these cases are likely only the tip of the iceberg, which demonstrates the need to enhance the understanding of the far-reaching consequences of including IPRs under the scope of IIAs.

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Notes

  1. 1.

    Treaty between the Federal Republic of Germany and Pakistan for the Promotion and Protection of Investments, signed 25 November 1959, entered into force 28 March 1962, Article 8(1)(a).

  2. 2.

    Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IC, Legal Instruments – Results of the Uruguay Round, 33 ILM 1197.

  3. 3.

    Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7.

  4. 4.

    Philip Morris Asia Limited v The Commonwealth of Australia, UNCITRAL, PCA Case No. 2012-12.

  5. 5.

    Eli Lilly and Company v The Government of Canada, UNCITRAL, ICSID Case No. UNCT/14/2.

  6. 6.

    UNCTAD (2018) World investment report 2018: investment and new industrial policies. United Nations, New York, p 88.

  7. 7.

    Convention on the Settlement of Investment Disputes Between States and Nationals of Other States, entered into force 14 October 1966, 575 UNTS 159.

  8. 8.

    Dolzer R, Schreuer C (2008) Principles of international investment law. Oxford University Press, Oxford, p 60.

  9. 9.

    This inquiry is important in the light of the fact that more than 50% of all known investor-state arbitrations have taken place under the framework of the ICSID Convention. See UNCTAD (2017) IIA issues note – International Investment Agreements: special update on investor-state dispute settlement: facts and figures. Issue 3. United Nations, New York, p 5.

  10. 10.

    Lavery RA (2009) Coverage of intellectual property rights in international investment agreements: an empirical analysis of definitions in a sample of bilateral investment treaties and free trade agreements. Transnatl Dispute Manag 6(2):1–49, 13.

  11. 11.

    Treaty between the Federal Republic of Germany and Pakistan for the Promotion and Protection of Investments, signed 25 November 1959, entered into force 28 March 1962, Article 8(1)(a):

    The term “investment” shall comprise capital brought into the territory of the other Party for investment in various forms in the shape of assets such as (…) property rights, patents and technical knowledge.

  12. 12.

    Treaty Between the Federal Republic of Germany and ____________ Concerning the Encouragement and Reciprocal Protection of Investments, 2008, Article 1(1)(d)–(e). See also Article 1(1)(d) of the Draft Agreement Between the Government of the Republic of France and the Government of the Republic of … on the Reciprocal Promotion and Protection of Investments, 2006.

  13. 13.

    See, e.g., 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 29 September 1999, entered into force 30 May 2001, Article 1; Agreement between the Government of the United Kingdom of Great Britain and Northern Ireland and the Government of Antigua and Barbuda for the Promotion and Protection of Investments, signed 12 June 1987, entered into force 12 June 1987, Article 1(a)(iv).

  14. 14.

    See, e.g., Agreement between Japan and Mexico for the Strengthening of Economic Partnership, signed 17 September 2004, entered into force 1 April 2005, Article 96(i).

  15. 15.

    See, e.g., Agreement between Japan and Mexico for the Strengthening of Economic Partnership, signed 17 September 2004, entered into force 1 April 2005, Article 96(i)(GG).

  16. 16.

    See, e.g., Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, as revised at Paris, 24 July 1971, 828 UNTS 221; Paris Convention for the Protection of Industrial Property, 20 March 1883, as revised at Stockholm, 14 July 1967, 21 UST 1538, 828 UNTS 305.

  17. 17.

    See, e.g., Agreement between Japan and Mexico for the Strengthening of Economic Partnership, signed 17 September 2004, entered into force 1 April 2005, Article 73.

  18. 18.

    For instance, the IPRs will have to be used in a substantive way in the business operations in the host state with the prospect of gain and entail a certain risk component.

  19. 19.

    Convention on the Settlement of Investment Disputes Between States and Nationals of Other States, entered into force 14 October 1966, 575 UNTS 159.

  20. 20.

    Dolzer R, Schreuer C (2008) Principles of international investment law. Oxford University Press, Oxford, pp 60–61.

  21. 21.

    Convention on the Settlement of Investment Disputes Between States and Nationals of Other States, entered into force 14 October 1966, 575 UNTS 159, Article 25 [emphasis added].

  22. 22.

    Mortenson JD (2009) Intellectual property as transnational investment: some preliminary observations. Transnatl Dispute Manag 6(2):1–10, 7.

  23. 23.

    Mortenson JD (2010) The meaning of ‘investment’: ICSID’s Travaux and the domain of international investment law. Harv Int Law J 51(1):257–318, 269.

  24. 24.

    Salini et al. v Morocco, ICSID Case No. ARB/00/4, Decision on Jurisdiction, 23 July 2003.

  25. 25.

    See, e.g., Biwater Gauff (Tanzania) Ltd. v United Republic of Tanzania, ICSID Case No. ARB/05/22, Award, 24 July 2008, para 316. See also Krishan D (2008) A notion of ICSID investment. In: Weiler TJG (ed) Investment treaty arbitration and international law. JurisNet LLC, Huntington, pp 61–84.

  26. 26.

    Mortenson JD (2009) Intellectual property as transnational investment: some preliminary observations. Transnatl Dispute Manag 6(2):1–10, 8 [emphasis added].

  27. 27.

    See, e.g., Malaysian Historical Salvors Sdn, Bhd v The Government of Malaysia, ICSID Case No. ARB/05/10, Award on Jurisdiction, 17 May 2007, paras 69 et seq.). This approach has also been referred to as the ‘Restrictive Approach’ (Mortenson JD (2010) The meaning of ‘investment’: ICSID’s Travaux and the domain of international investment law. Harv Int Law J 51(1):257–318, 271 et seq.).

  28. 28.

    For an example of a tribunal which adopted this approach, see, e.g., Aguas del Tunari v Republic of Bolivia, ICSID Case No. ARB/02/3, Decision on Jurisdiction, 21 October 2005, para 280. This approach has also been referred to as the “double-barrelled test” (Malaysian Historical Salvors Sdn, Bhd v The Government of Malaysia, ICSID Case No. ARB/05/10, Award on Jurisdiction, 17 May 2007, para 55). See also e.g., Ceskoslovenka Obchodni Banka (CSOB), A.S. v The Slovak Republic, ICSID Case No. ARB/97/4, Decision of the Tribunal on Objections to Jurisdiction, 24 May 1999, para 68; Salini et al. v Morocco, ICSID Case No. ARB/00/4, Decision on Jurisdiction, 23 July 2003, paras 44 and 52.

  29. 29.

    Malaysian Historical Salvors Sdn, Bhd v The Government of Malaysia, ICSID Case No. ARB/05/10, Award on Jurisdiction, 17 May 2007, para 70.

  30. 30.

    An exception to this territoriality principle consists of well-known trademarks which must be protected regardless of prior registration or use pursuant to article 16.2 of the TRIPs Agreement.

  31. 31.

    The disparities across jurisdictions with respects to the conditions which must be met to grant a patent, for example, are made possible by Article 27(3)(b) TRIPs Agreement which provides that:

    3. Members may also exclude from patentability:

    (…)

    (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.

  32. 32.

    It is noteworthy that although copyrights do not require to be registered in order to exist, the scope of the rights granted by a copyright may vary across jurisdictions, for example, in terms of the length of the protection.

  33. 33.

    See, e.g., Agreement between the Government of Hong Kong and the Government of Australia for the Promotion and Protection of Investments, signed 15 September 1993, entered into force 15 October 1993, Article 1(e)(iv):

    (e) “investment” means every kind of asset, owned or controlled by investors of one Contracting Party and admitted by the other Contracting Party subject to its law and investment policies applicable from time to time, and in particular, though not exclusively, includes:

    (…)

    (iv) intellectual property rights including rights with respect to copyright, patents, trademarks, trade names, industrial designs, trade secrets, know-how and goodwill;

  34. 34.

    In Canada, for instance, the owner of a Canadian patent will be able to sue infringers for “reasonable compensation” for infringements which occurred in Canada between the date the patent application was made available for public inspection and the date the patent was granted. See Government of Canada (2018) A guide to patents. https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr03652.html#protectionBeforeGrant. Accessed 2 May 2019.

  35. 35.

    It is noteworthy that the European Court of Human Rights found that an application for the registration of a trademark falls within the scope of property rights within the meaning of Article 1 of Protocol No.1 of the European Convention on Human Rights. See Case of Anheuser-Busch Inc. v Portugal, Application No. 73049/01 (11 January 2007), paras 73–78.

  36. 36.

    See, e.g., ASEAN Comprehensive Investment Agreement, signed 26 February 2009, entered into force 24 February 2012, Article 4(c)(iii) [emphasis added]:

    (c) “investment” means every kind of asset, owned or controlled, by an investor, including but not limited to the following:

    (…)

    (iii) intellectual property rights which are conferred pursuant to the laws and regulations of each Member State;

  37. 37.

    See, e.g., 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, Article 1(a)(iv).

  38. 38.

    Agreement Between the Government of Canada And The Government Of The Republic Of Argentina For The Promotion and Protection of Investment, signed 5 November 1991, entered into force 29 April 1993, Article 1(a)(iv) [emphasis added].

  39. 39.

    In this regard, footnote 4 to Article 2(d) (definition of “investor of a Party”) of the AANZFTA (Agreement Establishing the ASEAN-Australia-New Zealand Free Trade Area, signed 27 February 2009, entered into force 10 January 2010) provides that:

    For greater certainty, the Parties understand that an investor that “seeks to make” an investment refers to an investor of another Party that has taken active steps to make an investment. Where a notification or approval process is required for making an investment, an investor that “seeks to make” an investment refers to an investor of another Party that has initiated such notification or approval process.

  40. 40.

    Bernieri RC (2006) Intellectual property rights in bilateral investment treaties and access to medicines: the case of Latin America. J World Intellect Prop 9(2):548–572, 557.

  41. 41.

    See chapters “NT and MFN,” this volume.

  42. 42.

    Salacuse JW, Sullivan NP (2005) Do BITs really work?: an evaluation of bilateral investment treaties and their grand bargain. Harv Int Law J 46(1):67–130, 84–85.

  43. 43.

    Treaty between the Government of the United States of America and the Government of [Country] Concerning the Encouragement and Reciprocal Protection of Investment, 2012, Article 3(1).

  44. 44.

    Bjorklund AK (2008) National Treatment. In: Reinisch A (ed) Standards of investment protection. Oxford University Press, Oxford, pp 29–58, 31–32. See also Bjorklund AK (2005) Reconciling state sovereignty and investor protection in denial of justice claims. VA J Int Law 45(4):809–895, 837 and Root E (1910) The basis of protection to citizens residing abroad. Am Soc Int Law Proc 4:16–27, 20.

  45. 45.

    On exceptions provisions in IIAs, see generally UNCTAD (1999) National treatment. UNCTAD series on issues in international investment agreements, UNCTAD/ITE/IIT/11, vol IV). United Nations, New York, p 43 et seq.; Newcombe A, Paradell L (2009) Law and practice of investment treaties: standards of treatment. Kluwer Law International, Alphen aan den Rijn, p 481 (Chap. 10, “Exceptions and Defences”); de Mestral A, Vanhonnaeker L (2017) Exception clauses in mega-regionals (international investment protection and trade agreements). In: Rensmann T (ed) Mega-regional trade agreements and the future of international trade and investment law. Springer, Cham, pp 75–119.

  46. 46.

    Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, as revised at Paris, 24 July 1971, 828 UNTS 221, Article 5(1) and (3).

  47. 47.

    International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, adopted on 26 October 1961, entered into force18 May 1964, 496 UNTS 43, Article 2(1):

    1. 1.

      For the purposes of this Convention, national treatment shall mean the treatment accorded by the domestic law of the Contracting State in which protection is claimed:

      1. (a)

        to performers who are its nationals, as regards performances taking place, broadcast, or first fixed, on its territory;

      2. (b)

        to producers of phonograms who are its nationals, as regards phonograms first fixed or first published on its territory;

      3. (c)

        to broadcasting organisations which have their headquarters on its territory, as regards broadcasts transmitted from transmitters situated on its territory.

    See also Article 5(1):

    1. Each Contracting State shall grant national treatment to producers of phonograms (…).

  48. 48.

    Treaty on Intellectual Property in Respect of Integrated Circuits, opened for signature on 26 May 1989, 28 ILM 1477 (1989), Article 5(1):

    (1) [National Treatment]

    Subject to compliance with its obligation referred to in Article 3(1)(a), each Contracting Party shall, in respect of the intellectual property protection of layout-designs (topographies), accord, within its territory,

    1. (i)

      to natural persons who are nationals of, or are domiciled in the territory of, any of the other Contracting Parties, and

    2. (ii)

      to legal entities which or natural persons who, in the territory of any of the other Contracting Parties, have a real and effective establishment for the creation of layout-designs (topographies) or the production of integrated circuits, the same treatment that it accords to its own nationals.

  49. 49.

    Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IC, Legal Instruments – Results of the Uruguay Round, 33 ILM 1197, Article 3.

  50. 50.

    Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IC, Legal Instruments – Results of the Uruguay Round, 33 ILM 1197, Article 3(1). See also, e.g., Paris Convention for the Protection of Industrial Property, 20 March 1883, as revised at Stockholm, 14 July 1967, 21 UST 1538, 828 UNTS 305, Article 2(2)–(3).

  51. 51.

    Correa CM (2004b) Bilateral investment agreements: agents of new global standards for the protection of intellectual property rights?. GRAIN reports. http://www.grain.org/briefings/?id=186#one. Accessed 30 Apr 2019, p 11.

  52. 52.

    Some IPRs instruments subject the NT obligation to a reciprocity principle. See, e.g., Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, as revised at Paris, 24 July 1971, 828 UNTS 221, Article 6(1):

    (1) Where any country outside the Union fails to protect in an adequate manner the works of authors who are nationals of one of the countries of the Union, the latter country may restrict the protection given to the works of authors who are, at the date of the first publication thereof, nationals of the other country and are not habitually resident in one of the countries of the Union. If the country of first publication avails itself of this right, the other countries of the Union shall not be required to grant to works thus subjected to special treatment a wider protection than that granted to them in the country of first publication.

  53. 53.

    International Law Commission (1978) Draft articles on most-favoured-nation clauses. In: The most-favoured-nation clause. Yearbook of the international law commission 8, vol II, Part Two. United Nations, New York, p 8.

  54. 54.

    Ziegler AR (2008) Most-favoured-nation (MFN) treatment. In: Reinisch A (ed) Standards of investment protection. Oxford University Press, Oxford, pp 59–86, 60. (See chapter “MFN and Developing Countries,” this volume).

  55. 55.

    Acuerdo para la Promocion y la Proteccion Reciproca de Inversiones entre el Reino de España y la Republica Argentina, signed 3 October 1991, entered into force 28 September 1992.

  56. 56.

    English translation from the original text drafted in Spanish as follows: “En todal las materias regidas por el presente Acuerdo, este tratamiento no sera menos favorable que el otorgado por cada Parte a las inversiones realizadas en su territorio por inversores de une tercer país”.

  57. 57.

    See, e.g., Agreement Between Canada and __________ for the Promotion and Protection of Investments, 2004, Annex III (“Exceptions from Most-Favoured-Nation Treatment”).

  58. 58.

    In instances where the MFN principle is limited to the post-establishment phase, the investor will not be able to rely on conditions for the acquisition of IPRs provided in other more favorable agreements to which the host state is a party. In those cases, the host state can thus impose conditions for the acquisition of IPRs such as a requirement of reciprocity. See UNCTAD (2010) Most-favoured-nation treatment. UNCTAD series on issues in International Investment Agreements II, UNCTAD/DIAE/IA/2010/1. United Nations, New York, pp 38–39.

  59. 59.

    Correa CM (2004b) Bilateral investment agreements: agents of new global standards for the protection of intellectual property rights?. GRAIN reports. http://www.grain.org/briefings/?id=186#one. Accessed 30 Apr 2019, p 12. See also White BA, Szczepanik RJ (2009) Remedies available under bilateral investment treaties for breach of intellectual property rights. Transnatl Dispute Manag 6(2):1–13, 5 and Correa CM (2004a) Investment protection in bilateral and free trade agreements: implications for the granting of compulsory licenses. Mich J Int Law 26(1):331–353, 343.

  60. 60.

    Acconci P (2008) Most-favoured-nation treatment. In: Muchlinski P, Ortino F, Schreuer C (eds) The Oxford handbook of international investment law. Oxford University Press, Oxford, pp 363–406, 365.

  61. 61.

    See chapter “FET: View from the South,” this volume. In investment disputes involving IPRs investments, the FET standard of protection was invoked by the Claimants in Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7 and Philip Morris Asia Limited v The Commonwealth of Australia, UNCITRAL, PCA Case No. 2012-12. The Minimum Standard of Treatment was invoked in Eli Lilly and Company v The Government of Canada, UNCITRAL, ICSID Case No. UNCT/14/2.

  62. 62.

    Treaty between the Federal Republic of Germany and ______________ concerning the Encouragement and Reciprocal Protection of Investments, 2008, Article 2(2).

  63. 63.

    See, e.g., Comprehensive Economic and Trade Agreement (CETA) between Canada, of the one part, and the European Union and its Member States, of the other part, signed 30 October 2016, provisionally entered into force 21 September 2017, Article 8.10.

  64. 64.

    See chapter “Legitimate Expectations,” this volume.

  65. 65.

    These questions were discussed in Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7.

  66. 66.

    See chapter “Expropriation,” this volume. In investment disputes involving IPRs investments, the protection against unlawful expropriation was invoked by the claimants in Eli Lilly and Company v The Government of Canada, UNCITRAL, ICSID Case No. UNCT/14/2; Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7; Philip Morris Asia Limited v The Commonwealth of Australia, UNCITRAL, PCA Case No. 2012-12.

  67. 67.

    Schokkaert J, Heckscher Y (2009) International investment protection: comparative law analysis of bilateral and multilateral interstate conventions, doctrinal texts and arbitral jurisprudence concerning foreign investments. Bruylant, Brussels, p 368.

  68. 68.

    Newcombe A (2005) The boundaries of regulatory expropriation in international law. ICSID review. Foreign Invest Law J 20(1):1–57, 9–10.

  69. 69.

    “Creeping expropriation” must be distinguished from indirect expropriation as a consequence of its “distinctive temporal quality in the sense that it encapsulates the situation whereby a series of acts attributable to the State over a period of time culminate in the expropriatory taking of such property” (Generation Ukraine, Inc. v Ukraine, ICSID Case No. ARB/00/9, Award, 16 September 2003, para 20.22, [italics in original]).

  70. 70.

    Other terms have been used when referring to “indirect expropriation”: “disguised expropriation,” “regulatory expropriation,” and “consequential expropriation” or, by making reference to measures “tantamount to expropriation.”

  71. 71.

    Schokkaert J, Heckscher Y (2009) International investment protection: comparative law analysis of bilateral and multilateral interstate conventions, doctrinal texts and arbitral jurisprudence concerning foreign investments. Bruylant, Brussels, p 373.

  72. 72.

    Taubman A (2011) A practical guide to working with TRIPS. Oxford University Press, Oxford, p 47.

  73. 73.

    Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IC, Legal Instruments – Results of the Uruguay Round, 33 ILM 1197.

  74. 74.

    Treaty between the Government of the United States of America and the Government of [Country] Concerning the Encouragement and Reciprocal Protection of Investment, 2012, Article 6(5).

  75. 75.

    See, e.g., Article 7:

    The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

    Article 8(1):

    Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development …

    Article 40(1):

    Members agree that some licensing practices or conditions pertaining to intellectual property rights which restrain competition may have adverse effects on trade and may impede the transfer and dissemination of technology …

    Article 42:

    Members shall make available to right holders civil judicial procedures concerning the enforcement of any intellectual property right covered by this Agreement …

  76. 76.

    Shell Brand International A.G. and Shell Nicaragua S.A. v Republic of Nicaragua, ICSID Case No. ARB/06/14, registered at ICSID on 11 August 2006.

  77. 77.

    Agreement on encouragement and reciprocal protection of investments between the Republic of Nicaragua and the Kingdom of the Netherlands, signed 28 August 2000, entered into force 1 January 2003.

  78. 78.

    Bendell J, Concannon T (2003) World review – locating justice. J Corp Citizensh 9:18–20, 18.

  79. 79.

    Special Law for the Conduct of Lawsuits Filed by Persons Affected by the Use of Pesticides Manufactured with a DBCP Base, 23 November 2000, entered into force January 2001, 12 The Gazette – Official Journal 325, 17 January 2001.

  80. 80.

    Vadi VS (2009) Trade mark protection, public health and international investment law: strains and paradoxes. Eur J Int Law 20(3):773–803, 783.

  81. 81.

    The defendants also included Dow Chemical, Dole Foods Corporation, Inc., and Standard Fruit and Vegetables Co., Inc.

  82. 82.

    See Vis-Dunbar D, Peterson E (2007) Shell drops ICSID suit against Nicaragua over seizure of trademarks. Investment Treaty News. https://www.iisd.org/pdf/2007/itn_may9_2007.pdf. Accessed 2 May 2019.

  83. 83.

    See Franco v The Dow Chemical Company et al., para 11 (as cited in Vadi VS (2009) Trade mark protection, public health and international investment law: strains and paradoxes. Eur J Int Law 20(3):773–803, 784).

  84. 84.

    According to Shell, ‘[i]n the aggregate, the amounts purportedly claimed [on the basis of Special Law 364] exceed $5 Billion US’ (Vis-Dunbar D (2006) Shell launches claim against Nicaragua over seizure of intellectual property. Investment Treaty News. https://www.iisd.org/pdf/2006/itn_oct13_2006.pdf. Accessed 2 May 2019).

  85. 85.

    Vis-Dunbar D (2006) Shell launches claim against Nicaragua over seizure of intellectual property. Investment Treaty News. https://www.iisd.org/pdf/2006/itn_oct13_2006.pdf. Accessed 2 May 2019.

  86. 86.

    The order taking note of the discontinuance of the case was issued by the ICSID Secretary-General pursuant to Arbitration Rule 44 on 12 March 2007.

  87. 87.

    It is noteworthy that tobacco plain packaging measures also led to a case initiated at the WTO. See Australia – Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging, DS467, Report of the Panel of 28 June 2018. See also Voon T, Mitchell A (2011) Face off: assessing WTO challenges to Australia’s scheme for plain tobacco packaging. Public Law Rev 22(3):218–240.

  88. 88.

    See Mackay J, Eriksen M (2002) The tobacco atlas. World Health Organization, Geneva, p 36 (“No other consumer product is as dangerous, or kills as many people. Tobacco kills more than AIDS, legal drugs, illegal drugs, road accidents, murder, and suicide combined.”).

  89. 89.

    Single Presentation Regulation, adopted through Ordinance 514 of 18 August 2008.

  90. 90.

    80/80 Regulation, adopted through Presidential Decree 287/009 of 15 June 2009.

  91. 91.

    Tobacco Plain Packaging Act 2011, No. 148, 2011, as amended.

  92. 92.

    Tobacco Plain Packaging Act 2011, No. 148, 2011, as amended, cl. 3(1)(a).

  93. 93.

    Australian Government (2011) Consultation paper: Tobacco Plain Packaging Bill 2011 – exposure draft. http://www.health.gov.au/. Accessed 2 May 2019, p 2.

  94. 94.

    Tobacco Plain Packaging Act 2011, No. 148, 2011, as amended, Part II (‘Requirements for retail packaging and appearance of tobacco products’).

  95. 95.

    Tobacco Plain Packaging Act 2011, No. 148, 2011, as amended, cl. 20.

  96. 96.

    Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7, Award, 8 July 2016.

  97. 97.

    Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7, Award, 8 July 2016, para 274.

  98. 98.

    Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7, Award, 8 July 2016, para 11.

  99. 99.

    Agreement between the Swiss Confederation and the Oriental Republic of Uruguay on the Reciprocal Promotion and Protection of Investments, signed 7 October 1988, entered into force 22 April 1991.

  100. 100.

    Arbitrator Gary Born issued a concurring and dissenting opinion in which he disagreed with the majority’s assessment of the Single Presentation Regulation, arguing that the requirement imposed by that measure was not required or contemplated by the World Health Organization Framework Convention on Tobacco Control. In addition, the dissenting arbitrator opined that the Single Presentation Regulation’s presentation requirement was manifestly arbitrary and disproportionate and thus constituted a denial of fair and equitable treatment under Article 3(2) of the BIT and international law. See Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7, Concurring and Dissenting Opinion of Mr. Gary Born, 8 July 2016.

  101. 101.

    Philip Morris Brands Sàrl, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay (formerly FTR Holding SA, Philip Morris Products S.A. and Abal Hermanos S.A. v Oriental Republic of Uruguay), ICSID Case No. ARB/10/7, Award, 8 July 2016, paras 305–307 and 418.

  102. 102.

    Philip Morris Asia Limited v The Commonwealth of Australia, UNCITRAL, PCA Case No. 2012-12, Award on Jurisdiction and Admissibility, 17 December 2015.

  103. 103.

    Agreement between the Government of Hong Kong and the Government of Australia for the Promotion and Protection of Investments, signed 15 September 1993, entered into force 15 October 1993.

  104. 104.

    Philip Morris Asia Limited v The Commonwealth of Australia, UNCITRAL, PCA Case No. 2012-12, Award on Jurisdiction and Admissibility, 17 December 2015, para 588.

  105. 105.

    Philip Morris Asia Limited v The Commonwealth of Australia, UNCITRAL, PCA Case No. 2012-12, Award on Jurisdiction and Admissibility, 17 December 2015, para 588.

  106. 106.

    Eli Lilly and Company v The Government of Canada, UNCITRAL, ICSID Case No. UNCT/14/2, Final Award, 16 March 2017.

  107. 107.

    North American Free Trade Agreement Between the Government of the United States of America, the Government of Canada, and the Government of the United Mexican States, 8–17 December 1992, entered into force 1 January 1994.

  108. 108.

    Eli Lilly and Company v The Government of Canada, UNCITRAL, ICSID Case No. UNCT/14/2, Notice of Arbitration, 12 September 2013.

  109. 109.

    Eli Lilly and Company v The Government of Canada, UNCITRAL, ICSID Case No. UNCT/14/2, Final Award, 16 March 2017, para 227.

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    Eli Lilly and Company v The Government of Canada, UNCITRAL, ICSID Case No. UNCT/14/2, Final Award, 16 March 2017, para 309.

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    Mercurio B (2012) Awakening the sleeping Giant: intellectual property rights in international investment agreements. J Int Econ Law 15(3):871–915.

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  1. Faculty of Law, McGill University, Montréal, QC, Canada

    Lukas Vanhonnaeker

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  1. Faculty of Law, The Chinese University of Hong Kong, Shatin, Hong Kong

    Julien Chaisse

  2. Professor of International Law; and Director of the Research and Innovation Theme in Democratic Citizenship, University of Portsmouth, Portsmouth, UK

    Leïla Choukroune

  3. Institute of Malaysia and International Studies, National University of Malaysia, Bangi, Selangor, Malaysia

    Sufian Jusoh

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Vanhonnaeker, L. (2019). Intellectual Property Rights in International Investment Agreements. In: Chaisse, J., Choukroune, L., Jusoh, S. (eds) Handbook of International Investment Law and Policy. Springer, Singapore. https://doi.org/10.1007/978-981-13-5744-2_42-1

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