Author: Timothy R. Holbrook
Abstract: Intellectual property rights, particularly patents, copyrights, and trademarks, have been the subject of international treaties for quite some time. Those treaties all treat intellectual property rights as national in nature, with attendant territorial limits. The Agreement on Trade Related Aspects of Intellectual Property (TRIPS) established minimum standards for intellectual property. Even under TRIPS, intellectual property at the international level remains a system of national rights.
Various international agreements have created processes to allow parties to obtain collections of national rights, such as the Patent Cooperation Treaty, Madrid Agreement, and the Madrid Protocol. But these processes reflect an important concession: intellectual property rights are viewed differently in different countries in terms of purpose and substance. Some countries view IP rights from a strong utilitarian viewpoint that treats them akin to property rights. Others view these rights as market interventions by the state that can be leveraged—and limited—due to other competing policy concerns.
Intellectual property rights, therefore, are pregnant with concerns of sovereignty. Intellectual property disputes frequently involve more than simply an infringement assessment. Instead, they involve a determination of whether the relevant IP right is valid at all. For example, some countries may permit the patenting of genetically altered mice, and others will not. The assessment of what inventions and creations should be protected in a country necessarily implicates the political choices of the sovereign.
For extraterritoriality, that means that the use of one nation’s intellectual property to leverage control over the acts and markets of another have significant implications for sovereignty. These concerns could be vindicated through a robust use of conflicts of law in extraterritorial jurisprudence. The role of conflicts has been, at best, unclear in U.S. law. This chapter suggests, however, that when the conflict is one over the validity within the foreign country, conflict concerns should be at their apex. In other words, why should one jurisdiction allow an IP right holder to leverage a right into a country that would find that right invalid? This dynamic goes beyond merely holding someone liable for acts in a foreign country; it directly undermines the political choices of that sovereign in a far more significant way.
Citation: Holbrook, Timothy Richard, Extraterritoriality: Intellectual Property (January 25, 2022). Elgar Research Handbook on Extraterritoriality and International Law (Edward Elgar, forthcoming 2022), Available at SSRN: https://ssrn.com/abstract=4017887
