Edited by Jacques de Werra
Chapter 13: The law governing international intellectual property licensing agreements (a conflict of laws analysis)
As a result of the increasing internationalization of contracts relating to intellectual property (IP) rights it has become the norm that licenses involve a conflict of laws in circumstances that may raise complex issues concern- ing the applicable law.1 The fact that IP license agreements are very diverse poses additional difficulties to the adoption and interpretation of Private International Law (PIL) provisions in this area. Moreover, even the trend to draft very detailed contracts, including the use of model agreements, the incorporation by reference of certain rules or the use of standard terms and conditions do not exclude in practice the need to consider the conflict of laws implications of international IP licenses. A careful and thorough drafting of international contracts may indeed provide significant legal certainty to the extent that it can lessen the role of the law applicable to the contract given the detailed content of the agree- ment. Also, the inclusion of a choice of law clause between the parties can prevent the difficult task of establishing the law applicable to the contract in the absence of choice. Moreover, a choice of forum (or an arbitration agreement) can exclude any doubts as to the available forum for litigation. Notwithstanding the aforementioned, the applicable law issues posed by international IP licenses involve other aspects whose practical relevance is not influenced to the same extent by the drafting of the relevant contract. That is the case with regard to the scope of the law applicable to the IP rights that are the subject matter of the license.
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