Private International Law and Intellectual Property: the ILA Kyoto Guidelines

In 2020, the 79th Conference of the International Law Association passed the Resolution 6/2020 and adopted the Guidelines on Intellectual Property and Private International Law (‘Kyoto Guidelines’).

The Guidelines are part of international efforts to establish a cooperative global system for jurisdiction, choice of law, and judgment recognition and enforcement in transnational IP disputes. They apply to civil and commercial matters involving IP rights that are connected to more than one State.

In this webinar, we invite distinguished professors from Japan, Republic of Korea and Australia to discuss the contents, implications, and challenges of the Guidelines in regulating complicated IP disputes.

Speakers:

Professor Toshiyuki Kono (Kyushu University, Japan)

The background and significance of the ILA Kyoto Guidelines 2020

The ILA Kyoto Guidelines were adopted in December 2020 at the General Assembly of the ILA. I will explain why and how the initiative to create the Kyoto Guidelines started 10 years ago and what its significance is under the current circumstances, especially after the adoption of the Convention for the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters in 2019. The ILA Kyoto Guidelines adopted innovative approaches. Hence, a few selected provisions will be explained in detail which include laws applicable to initial ownership and ubiquitous infringement.

Professor Gyooho Lee (Chung-Ang University, Republic of Korea)

Laws applicable to transferability of an intellectual property right and employment contracts under ILA Guidelines

Transferability of an intellectual property right is the law of the State for which protection is sought (Article 19 of ILA Guidelines). In this context, a Korean case will be discussed (Seoul High Court on June 25, 2020, Case No. 2019 Na 2013948), whose main focus is which law is applicable to split-off of a company. My argument is that, in this case, lex loci protection is is the law applicable to transferability of shares of copyright co-owners. Also, my presentation will deal with applicable laws in connection with employment contracts under Article 23 of ILA Guidelines. In this context, it will discuss the Korean Supreme Court Decision on 15 January, 2015 (Case No. 2012 Da 4763), which held that the grant of a free non-exclusive licence to an employer by operation of law would be governed by the law applicable to the employment relationship.

Professor Vivienne Bath (Sydney Law School, Australia)

Kyoto Guidelines and injunction in transnational standard essential patents and parallel patent infringement disputes

The paper will look at the possibilities presented by the Kyoto Guidelines in view of the current controversy about jurisdiction over rate-setting for standard essential patents and parallel patent infringement cases.

Moderator: