Action Plan on Intellectual Property outlines significant changes for the EU IP framework

By Camille Vanpeteghem, Benoit Van Asbroeck

11-2020

On 25 November 2020, the European Commission published a new Action Plan on Intellectual Property to support the EU’s recovery and resilience. The action plan aims to help companies, especially small and medium-sized companies (SMEs), to make the most of their inventions and creations and to put them on track towards economic recovery and Europe’s global green and digital leadership.

The Commission acknowledges that the technological revolution (whereby reference is made to the data economy, artificial intelligence (AI), blockchain, 3D-printing and new business models such as the platform economy) offers a unique window of opportunity to modernise the EU’s approach to protecting intangible assets. Consequently, the action plan proposes to upgrade the EU framework on Intellectual Property where necessary and put in place balanced IP policies to help companies capitalise on their inventions and creations in the time of the coronavirus health and economic crises, amid digital and green transitions.

In particular, the action plan identifies five key focus areas, with specific proposals for action to:

  1. Improve the protection of IP
  2. Boost the uptake of IP by small and medium-sized companies (SMEs)
  3. Facilitate access to and sharing of intangible assets while guaranteeing a fair return on investment
  4. Fight counterfeiting and improve enforcement of IP rights
  5. Promote a global level playing field

The proposals for each key focus area are summarized below:

  1. Improve the protection of IP

    In the first place, the Commission aims to address the fragmentation and the procedural complexity of the EU’s IP system. To this end, the plan proposed to ensure that EU innovators have access to fast, effective and affordable protection tools.

    By 2021, the Commission wants to secure the launch of the unitary patent system to create a one-stop-shop for patent protection and enforcement across the EU. In addition, the Commission envisages an evaluation of the Supplementary Protection Certificates (SPC) system to make it more transparent and efficient.  

    As part of the transformation to the digital and green economy, the Commission will revise the EU legislation on design protection. The aim is to improve the accessibility and affordability of design protection in the EU, especially for textile, furniture and electronics ecosystems. A recent evaluation of the EU design legislation identified several shortcomings. Clarity is needed as to what extent new forms of designs (e.g. animated designs, graphical user interfaces) and 3D printing files can be protected. Furthermore, the Commission intends to revise design protection for spare parts in light of the transition to a more sustainable and greener economy.

    In the area of copyright, the Commission will soon issue guidance to support Member States in implementing Article 17 of the Copyright Directive, which sets out a specific legal regime for the use of copyright-protected content by user-uploaded content sharing platforms. Concerning the existing EU copyright framework, the Commission will also work on a number of reports stemming from specific provisions set out in several EU copyright instruments, including the Term of Protection Directive, the Collective Rights Management Directive, the so-called “Marrakesh” Directive, and the Portability Regulation.

    The action plan also addresses new digital technologies such as AI or blockchain. The Commission will stimulate industry dialogue to explore the use of these new technologies and improve the effectiveness of the existing IP systems. Additionally, discussions on the impact of AI on IPRs will be organised, and further analysis must be done with respect to AI technologies that are creating new works and inventions. In that regard, the Commission takes the view that AI systems should not be treated as authors or inventors.

    The Commission also noted that the protection system for geographical indications for agricultural products must be strengthened and that it will consider whether to propose an EU protection system for non-agricultural geographical indications. Lastly, the plant variety legislation will be evaluated.

  2. Boost the uptake of IP by small and medium-sized companies (SMEs)

    Secondly, the Commission wants to address the issue that SMEs do not make full use of the opportunities offered by IP protection. The Commission intends to provide a scheme for IP SME Vouchers by 2021 to finance IPR registration and strategic IP advice. The action plan also includes the roll-out of IP assistance services for SMEs in the “Horizon Europe” programme.

  3. Facilitate the sharing of IP

    The action plan further highlights that a resilient, green and competitive economy needs tools to facilitate access to critical IP protected technologies in times of crisis, to facilitate license copyright and standard-essential patents (SEP), and to promote data sharing.

    The COVID-19 crisis illustrated the dependence on critical innovations and technologies, particularly in the health sector. The Commission anticipates to deploy tools to ensure the availability of critical IP in times of crisis by 2021-2022. These efforts would include new licensing tools and a system to co-ordinate compulsory licensing.

    The Commission aims to further reduce friction and litigation between SEP owners and implementers by encouraging industry-led initiatives, combined with possible regulatory reforms, to clarify and improve the framework governing the declaration, licensing and enforcement of SEPs.

    With regards to copyright licensing, the Commission is launching a study on copyright and new technologies, which will focus on copyright data management and artificial intelligence. The use of such new technologies could help achieve more transparency and better rights data management, notably to improve the identification of rights owners. The Commission will reach out to relevant stakeholders to promote the quality of copyright data and to achieve a well-functioning copyright infrastructure, e.g. by improving authoritative and updated information on right holders, terms and conditions and licensing opportunities.

    In the interest of promoting data access and sharing, the Commission is currently evaluating the Trade Secrets Directive and the Database Directive to ensure a balance between the need to foster data sharing and the need to safeguard legitimate interests. In particular, a new study will clarify certain key provisions of the Trade Secrets Directive. The study will analyse questions as to which types of data could qualify as ‘trade secrets’, whether the current set of exceptions can support the data and green economy, as well as whether and how the tools offered by the directive can be used to efficiently counter the unlawful acquisition, use and disclosure of data and datasets.

    The Commission also decided, in the framework of the European Strategy for Data, to review the Database Directive in order to facilitate the sharing of and trading in machine-generated data and data generated in the context of rolling out the IoT. The review will take place alongside the Data Act and take into account initiatives of data sharing in the area of antitrust law.

  4. Fight counterfeiting and improve enforcement of IP rights

    As counterfeiting and piracy are still thriving, including by taking advantage of digital technologies, the action plan proposes specific measures to curb these issues.

    Reference is made to the forthcoming Digital Services Act. New rules will be adopted to clarify and upgrade the responsibilities of online platforms, while disincentives for voluntary actions taken by online platforms to address illegal content (goods or services) they intermediate will be removed. The forthcoming proposal for the Digital Services Act package will aim to harmonise a set of specific, binding and proportionate obligations for digital services, enforced by a strengthened supervisory framework.

    The action plan also envisages strengthening the capacities of law enforcement authorities and the role of OLAF in the fight against counterfeiting and piracy.

    Furthermore, the plan proposes creating an EU Toolbox against counterfeiting. This toolbox will set out principles for joint action, cooperation and data sharing among right holders, intermediaries and law enforcement authorities. The toolbox will clarify roles and responsibilities and identify ways to work together. It will also promote the use of new technologies such as image recognition, artificial intelligence and blockchain.

  5. Promote a global level playing field

As a final action point, the Commission puts forward that the EU must harness its potential to act as a global norm-setter. It proposes several actions for the EU to set high IP standards at the international level. For example, these proposals would be to include ambitious IP Chapters in free trade agreements, involve IP assets in foreign investment screening and defend global standards of IP protection in global fora (e.g. WIPO or WTO). Additionally, the Commission will consider EU accession to the Singapore Treaty on the Law of Trademarks. In the area of copyright, the Commission will continue to take an active role in WIPO negotiations to reach an agreement on a new treaty ensuring international protection to broadcasting organisations. It will also work towards securing the EU’s ratification of the WIPO Beijing Treaty (signed by the EU in 2013), which grants international protection to audio-visual performances.

Key Takeaways from the EU Action plan:

The EU Action Plan on Intellectual Property lays out many ambitious initiatives. The EU Intellectual Property Framework will undergo significant changes in the coming years. The main developments to watch are:

  • The publication of the Commission guidance on Article 17 DSM (expected before the end of 2020)
  • The clarification and upgrade of the responsibilities of digital services, in particular online platforms, through the Digital Services Act (expected on 2 December 2020)
  • The review of the Database Directive (2021)
  • The clarification of certain key provisions of the Trade Secrets Directive (2021)
  • The review of the EU legislation on industrial designs (2021)

To be continued!

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