The Permanent Bureau (PB) continues to monitor developments at the intersection of intellectual property (IP) and private international law (PIL), including through cooperation between the PB and the International Bureau of the World Intellectual Property Organization (WIPO).
The advent of the digital economy has motivated study of whether existing instruments and legislation are adequate for the new technological landscape. PIL issues in relation to IP matters have, in particular, arisen in relation to big data, artificial intelligence (AI) and non-fungible tokens (NFTs).
The HCCH has addressed the intersection of PIL and IP through several of its instruments and projects such as the Convention of 30 June 2005 on Choice of Court Agreements and the Principles on Choice of Law in International Commercial Contracts. IP-related judgments are not within the scope of the Convention of 2 July 2019 on the Recognition and Enforcement of Foreign Judgments in Civil or Commercial Matters, though Members have agreed that further explanation of the treatment of IP-related judgments would be provided in the Explanatory Report to the Convention.
In 2022, the PB and the WIPO Secretariat jointly prepared a questionnaire on the intersection between PIL and IP; the survey responses identified actual and practical PIL issues in IP disputes, providing a snapshot of the topics that arise in cross-border IP dealings, including issues concerning jurisdiction, determining and applying the applicable law, recognising or enforcing foreign IP-related judgments, and administrative and judicial cooperation. The questionnaire was open for consultation to a wide audience, including Members of both Organisations, other intergovernmental organisations, non-governmental organisations, practitioners, in-house counsel, academics and other private individuals. The final report of the survey responses was published in December 2022.
In 2019, the PB and the WIPO Secretariat coordinated the publication of the Guide, “When Private International Law Meets Intellectual Property – A Guide for Judges”. By addressing the intersection of PIL and IP, the Guide is intended as a practical means of supporting the work of judges and lawyers around the world. It does not intend to offer an exhaustive treatment of the law in all areas, but rather elucidates the operation of private international law in intellectual property matters with illustrative references to selected international and regional instruments and national laws.
Guide: “When Private International Law Meets Intellectual Property – A Guide for Judges”
In March 2024, the Council on General Affairs and Policy of the HCCH (CGAP) adopted Conclusion and Decision (C&D) Nos 16 and 17:
16. CGAP noted the work carried out on the intersection of IP and PIL, including the cooperation between the PB and the International Bureau of WIPO.
17. CGAP invited the PB to continue monitoring developments on the intersection of IP and PIL, subject to available resources, and in light of the work programme related to the digital economy.
- Prel. Doc. No 3A of January 2023 - Digital Economy and the HCCH Conference on Commercial, Digital and Financial Law Across Borders (CODIFI Conference): Report
