“This new framework will strengthen innovation, but also technological sovereignty”, said the EU European Commissioner for Internal Market, Thierry Breton, as he presented the Commission’s various initiatives on patents on Thursday 27 April. The EU wants to continue on the path of the Unitary Patent and find solutions at European level for the different types of patents and IP-related procedures.
The Unitary Patent will come into force on 1 June 2023 (see EUROPE 13125/19) and will provide Europe-wide protection and simpler procedures. However, it will initially cover only 17 Member States and will not solve all the administrative difficulties faced by some patent holders.
In an attempt to remedy this, the Commission has presented no less than six regulations updating old texts. These concern: - Standard Essential Patents (SEPs); - compulsory licensing; - Supplementary Protection Certificates (four regulations).
Standards Essential Patents (SEPs)
SEPs protect a technology that is essential for compliance with a certain standard. They are mainly concerned with connected objects or standards for compressing audio and video files. According to the Commission, the system of SEPs and the licensing of their operation lacks transparency and fairness. This is due to de facto monopolies on certain SEPs for which licences are difficult to obtain or very expensive.
For this reason, the Commission wants to subject SEP holders to new obligations and take on a conciliatory role between them and licence users (see EUROPE 13168/13).
In particular, it wants to create a register in which patent holders will have to register their SEPs, if they want to enforce their rights later on. This will be managed by the EU Intellectual Property Office (EUIPO), which will also make available online a database of all relevant information on registered SEPs.
In order to avoid over-declarations of SEPs, the Commission wants to give the EUIPO the possibility, via a competence centre with independent conciliators, to conduct essentiality checks on certain SEPs. It also wants to get involved in the royalties associated with patents and make recommendations on these to avoid excessive fees.
Finally, the regulation creates a conciliation system between patent holders and users, which the latter must use before they can go to court. Conciliators appointed by the EUIPO Competence Centre will be responsible for arbitrating individual cases. They will have to determine whether the licences are granted on “fair, reasonable and non-discriminatory” (‘FRAND’) terms.
“We want to facilitate negotiations, in good faith. I know that good faith is often not forthcoming, especially as the margins generated are large”, said the European Commissioner.
For IP Europe, on the other hand, the regulation will only encourage existing dishonest behaviour among patent users, which delays the purchase of licences and legal action. Furthermore, it considers that the obligation to register and provide a certain amount of data will lead to an additional administrative burden for SEP holders. “This text will reduce incentives to invest in research and development and will damage European technological sovereignty”, insisted a member of the IP Europe Council after the publication of the Commission’s texts.
To see the regulation: https://aeur.eu/f/6lo
Compulsory Licensing
In certain crisis situations, a government can, through compulsory licensing, authorise the use of a patented invention without the consent of the patent holder. The Commission plans to revise the existing regulation in this area to create an EU-wide compulsory licensing instrument.
Following the triggering of a crisis mechanism, such as the Single Market Emergency Instrument or the Chips Act, the EU could make use of a compulsory licensing instrument, valid on European soil. This should facilitate procedures, given that value chains are often cross-border.
To see the regulation: https://aeur.eu/f/6lm
Supplementary Protection Certificates
Supplementary Protection Certificates (SPCs) extend the duration of certain rights associated with patents. As in the previous cases, they are currently only valid in one Member State. Moreover, protection via SPCs is 60 times more expensive in the EU than the equivalent protection in the US.
Again, the Commission proposes to harmonise the CPS system by updating two existing regulations and introducing two new regulations. The first two regulations concern respectively medicinal products and plant protection products and create a centralised procedure for granting national SPCs.
As for the two new regulations, they cover respectively the same two sectors and create the possibility to give these SPCs a European value, on the same principle as the Unitary Patent. This will greatly reduce the costs associated with the procedure.
To see the four regulations: https://aeur.eu/f/6ll
Support for SMEs
To encourage SMEs to make greater use of patents, the Commission will make available new vouchers under the 2023 SME Fund, to enable these companies to spend less on administrative costs related to registration, for example. (Original version in French by Léa Marchal)