Progress in the Implementation of the

EU’s IP Action Plan

Elena Kostadinova
DG GROW, European Commission

Auto IP & Legal World Summit 2022

 World IP Day 2022
“Intellectual Property and Youth: Innovating for
a Better Future”
 IP Action Plan
Better IP protection
Effective use and • Improve the ways IPRs are
protected
deployment of IP
• Boost the uptake and use of
IP, especially for SMEs

Access and sharing of IP

• Facilitate licensing and diffusion
of IP

Fight IP infringement
• Better enforcement and Fair play at global level
cooperation • The EU as a global standard
setter
Zooming in on: New legislative initiatives:
• Regulation for CI GI* protection
Fighting infringements of – proposal
Intellectual Property Rights:
• Designs reform
• United Patent Court
Agreement – provisional • Patents package:
application period started
February ’22 1. Supplementary Protection
Certificates (SPCs)
• EU Toolbox against 2. Standard Essential Patents
Counterfeiting – upcoming (SEPs)
High-Level Roundtables 3. Compulsory licensing

*CI GI = Geographical Indications for craft and industrial products

 Unitary Patent
Unitary patent protection (UPP):
• Regulation 1257/2012 implementing enhanced cooperation in the area
of the creation of Unitary Patent Protection (25 Member States,
excluding ES & HR)
• Regulation 1260/2012 implementing enhanced cooperation in the area
of the creation of unitary patent protection with regard to the applicable
translation arrangements

Unified Patent Court (UPC):

• International Agreement on a Unified Patent Court (signed by 24 MSs,
excluding ES, HR & PL)
5
 Unitary Patent benefits
Validation/
Filing and Litigation (if
translation Renewal fees
examination any)
requirements

To be paid in Before national

Today: Heavy and costly courts only
each designated
(non-unitary) requirements in (i.e. fragmented,
country
European patent Centralised (EPO) several MSs thus costly and with
(expensive total risks of discrepancies
(available since 1978) (though not in all)
fees) in decisions)

(the procedure and

Future unitary the related costs No such Centralised
patent (only for will not change) requirements To be paid (new UPC)
centrally to the (also for regular Eur.
those MSs having anymore (except
patents, and SPCs)
ratified the UPCA – light ones during a EPO (cheaper) (note: transitional
probably 17 initially) transitional period) period / nat. courts)
6
 What are the next steps?

• Since January 2022) - provisional application of the

Unified Patent Court (UPC) Agreement
• Operational launch of the unitary patent system
(including the UPC), which is expected for late 2022 or
early 2023
 Revision of design legislation
Goals:
• Bringing single market for spare parts closer to completion
• Making the Registered Community Design (RCD) system more accessible and efficient
• Approximation of parallel design systems (Community and national)
How?
Harmonise national laws, Simplification and modernisation
including procedures not of procedures
dealt with by Directive (e.g. representation requirements)

Enhance interoperability Adjust fee levels and the fee

between national and structure for RCDs
RCD system

Harmonise national laws

on spare parts protection
 Design: where are we?
• Directive 98/71/EC and Council Regulation (EC) No 6/2002 > 20
years old.
• Revision of designs acquis announced in IP Action Plan of
25/11/2020
• In 2020, the Commission concluded an evaluation of EU
legislation on design protection
• Two public consultations from 18/12/2018 until 30/04/2019 and
from 29/04 to 22/07/2021.
• Draft Impact Assessment Report: green light RSB 24/11/2021.
• Currently work on proposals.
 Standard Essential Patents
• Creation of a fair and balanced licensing framework for standard
essential patents (SEPs).

• Improve transparency

• Provide some clarifications with regard to the licensing

negotiations process

• Enhance enforcement
• A Call for evidence and a public consultation are open until 9 May
2022
 Compulsory Licensing

Access to IP in times of crisis:

• Ensuring that effective systems for issuing compulsory licenses are
in place, to be used as a means of last resort.
• Currently, legislation on compulsory licensing of patents is
fragmented in the EU even though value chains operate across the
EU. This can hinder EU’s ability to respond to (EU-wide) crises.
• A Call for evidence is open for feedback until 29 April 2022
 EU Toolbox against counterfeiting
Goals:
• Clearer roles, actions & measures, better cooperation
• Easier information sharing
• Promote innovation, development and use of adequate tools & new
technologies for effective action against counterfeiting

Key players:
• IP right holders: all sizes, all ecosystems
• Online offline intermediaries, e.g.:
• Public authorities, in particular law enforcement authorities
 The EU Toolbox: possible concrete tools

Guiding principles Databases & IT systems Public authorities

Practical guidance Checklists Standard forms Right holders

e-learning modules Awareness-raising material Intermediaries

Scope: Online and offline counterfeiting

 The EU Toolbox: next steps
September October December February April May
2022
2021 2021 2021 2022 2022 2022

14/09: Workshop 02/12: Workshop 27/04: Workshop

‘Social media’ ‘Payments’ ‘Transport & logistics’ High-Level
Roundtables
(dates tbc)
12/10: Workshop 03/02: Call for Evidence 31 May (tbc): Workshop
‘Domain names’ published ‘Information sharing’

Implementation:
80+ contributions received Q4 2022 (tbc)
 SMEs
Effective use and deployment
• Provide a scheme for IP SME Vouchers finance
IPR registration and strategic IP assistance
• Strategic IP assistance services for SMEs in
“Horizon Europe” and beyond
• Improved IP information – European IP Info
Centre, IP Helpdesks and integration into Your
Europe
• IP as an asset to facilitate access to finance
 Services offered by the SME Fund

• Partial reimbursement of the costs of IP Scan services (initial

IP advice on the best means to protect an intangible asset)
• Partial reimbursement of the registration fees of national, EU
and international trademarks and designs
• Partial reimbursement of the registration fees of national
patents
• https://ipil.lu/fr/fonds-pme/ SME Fund - EUTM (europa.eu)
 Thank you

© European Union 2022

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