Understanding the complexities of international service of process is essential for clients involved in cross-border intellectual property disputes. Service of process procedures vary significantly depending on the foreign nations involved, making it critical for U.S. litigants to be aware of these distinctions to avoid time-consuming and costly delays.
The Hague Convention of November 15, 1965, is the primary multilateral treaty governing international service of process in civil or commercial matters. With over 70 member nations, including most Western European countries, China, and Russia, the Hague Convention simplifies and expedites the transmission of legal documents for service of process. Under this treaty, each participating nation designates a Central Authority to act as the service agent. The main channel involves transmitting documents from the requesting state's judicial officer to the Central Authority of the requested state. This authority then executes the request through informal delivery, local legal methods, or specific methods requested by the applicant, provided they are compatible with local laws.
The Hague Convention also allows for alternative channels, such as consular or diplomatic channels and direct communication between judicial officers or competent persons. Article 10(a) permits service via postal channels unless prohibited by the destination state. However, a circuit split in U.S. courts regarding the scope of Article 10(a) complicates this avenue. Some courts permit service by mail, while others do not. Additionally, proof of service must be filed with the U.S. court, often requiring the party to draft its own proof, which can add to legal expenses.
The Inter-American Convention on Letters Rogatory and Additional Protocol (IACAP) is another key treaty, particularly relevant for service involving Central and South American nations. Adopted in 1975, the IACAP establishes uniform procedures for service by letters rogatory but also allows alternative methods. Practical difficulties with implementation, such as delays in some signatories designating Central Authorities, can further complicate this process and increase costs due to extended timelines and additional legal coordination.
Timing is a significant factor in international service of process. Procedures can become lengthy, with service in countries like China potentially taking up to 24 months. Similarly, the IACAP process can take six months to a year. COVID-19 has also introduced changes, with some countries, like China, moving the process online, which, despite being remote, still involves considerable delays. These delays can lead to increased legal fees and other associated costs, such as document translation and courier services.
Alternative measures can mitigate these delays. For instance, a foreign defendant may agree to waive formal service of process, or a U.S.-based subsidiary of a foreign corporation might be served instead. Alternative dispute resolution (ADR) methods, such as arbitration and mediation, offer viable options to avoid the complexities of international litigation. The World Intellectual Property Organization (WIPO) and other institutions provide robust arbitration and mediation services for IP disputes, which can be more efficient and less costly than state court proceedings.
Additionally, there are physical alternatives for serving an international infringer. For example, a U.S. litigant may serve documents on a foreign defendant without triggering Hague Convention procedures if the foreign defendant agrees to waive formal service. Serving a foreign parent corporation via a subsidiary located in the U.S. is another viable option. Good service may also be achieved by serving a foreign partnership through a partner residing in the U.S., or a foreign individual present in the U.S. These physical alternatives can expedite the process and reduce the complexities and expenses associated with international service.
While the Hague Convention and the IACAP provide frameworks for international service of process, navigating these procedures remains challenging and can incur significant costs. Clients must stay informed about recent changes and trends to manage their international IP disputes effectively. By understanding both the conventional and alternative methods of service, litigants can better strategize their approach to international IP enforcement, potentially reducing delays and expenses.
Summer Associate Emma Romig assisted in the drafting of this client alert. To learn more about our summer associate program, click here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.