Interview With João Negrão – Executive Director of the EUIPO – New Patent Activities at the EUIPO – DesignEuropa Award – EUIPO Strategic Plan – Mediation Center – Short Report From the INTA Annual Meeting in Atlanta – IP Fridays – Episode 152

IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more

In this interview with Rolf Claessen on the IP Fridays podcast, João Negrão, the executive director of the EUIPO, discussed the office’s recent developments and future plans. Negrão highlighted the conclusion of the consultation phase for the EUIPO’s 2023 Strategic Plan, emphasizing key areas such as financial sustainability, efficiency, effectiveness, and the integration of emerging technologies like artificial intelligence. He noted the challenges posed by political and economic volatility and the expansion of EUIPO’s competencies, including geographical indications.

Negrão addressed the potential new role of the EUIPO in handling non-binding essentiality checks for standard essential patents (SEPs), should the proposed regulation be approved. He assured that the EUIPO would adapt to these new competencies using a project management approach. The interview also covered the EUIPO’s new mediation center for IP disputes, launched in November 2023. Negrão explained that while mediation and conciliation have been offered by the Boards of Appeal since 2011, the goal is to expand these services to first-instance proceedings to provide cost-effective and timely alternatives to traditional dispute resolution.

Celebrating the EUIPO’s 30th anniversary, Negrão reflected on its growth from a small office to an organization with 1,200 staff members, protecting almost five million trademarks and designs. He cited significant achievements, including the establishment of the Observatory on IP Infringements. The conversation touched on the DesignEuropa Awards, now held annually, which recognize excellence in design across various categories, including industry, small and emerging companies, lifetime achievement, and young designers. These awards aim to promote the design system and celebrate outstanding work. You can apply here:

https://www.euipo.europa.eu/en/designs/designeuropa-awards/how-to-apply

Negrão discussed the EUIPO’s new competence in geographical indications for craft and industrial products, aimed at protecting local products, promoting quality recognition, and supporting local producers and regions in Europe. He also highlighted the EUIPO’s expanding international cooperation with countries like Ukraine, Moldova, and Georgia, aiming to harmonize IP systems globally and support European businesses by ensuring robust, predictable IP systems in these regions.

Finally, Negrão outlined his personal goals for the EUIPO, emphasizing his desire to use his extensive experience to contribute to the office’s further development. He aims to focus on strategic planning, cooperation with national and international IP offices, and addressing issues such as IP infringements and the underrepresentation of women in the IP system. Overall, the interview underscored the EUIPO’s efforts to improve the IP system, embrace new competencies and technologies, and support stakeholders through effective implementation and international cooperation.

Key Takeaways:

1. EUIPO’s Strategic Plan:
   • The consultation phase for the 2023 Strategic Plan closed recently.
   • Key focus areas include financial sustainability, efficiency, effectiveness, and leveraging emerging technologies like artificial intelligence.
   • The EUIPO aims to address challenges such as political and economic volatility and expanding competencies, including geographical indications.
2. New Competencies and SEPs:
   • The EUIPO may soon handle non-binding essentiality checks for standard essential patents (SEPs) if the proposed regulation is approved.
   • João Negrão emphasized that the EUIPO will adapt and implement these new competencies using their established project management approach.
3. Mediation Center:
   • The EUIPO launched a new mediation center for IP disputes in November 2023.
   • Mediation and conciliation have been offered by the Boards of Appeal since 2011.
   • The aim is to expand these services to first-instance proceedings to provide cost-effective, timely alternatives to traditional dispute resolution.
4. 30th Anniversary and Achievements:
   • Celebrating its 30th anniversary, the EUIPO has grown from a small office to one with 1,200 staff members, protecting almost five million trademarks and designs.
   • Significant achievements include the effective protection of IP rights and the establishment of the Observatory on IP Infringements.
5. DesignEuropa Awards:
   • The DesignEuropa Awards, now held annually, recognize excellence in design across several categories, including industry, small and emerging companies, lifetime achievement, and young designers.
   • The awards aim to promote the design system and celebrate outstanding work in the field.
6. Geographical Indications:
   • The EUIPO has taken on the competence for geographical indications for craft and industrial products.
   • This new IP right aims to protect local products, promote quality recognition, and support local producers and regions in Europe.
7. International Cooperation:
   • The EUIPO is expanding its international cooperation with countries like Ukraine, Moldova, and Georgia, aiming to harmonize IP systems globally.
   • These efforts support European businesses by ensuring robust, predictable IP systems in these regions.
8. Future Goals:
   • João Negrão’s personal goal is to use his extensive experience to contribute to the EUIPO’s further development.
   • The focus will be on strategic planning, cooperation with national and international IP offices, and addressing issues such as IP infringements and underrepresentation of women in the IP system.

Overall, the interview highlighted the EUIPO’s ongoing efforts to improve the IP system, embrace new competencies and technologies, and support stakeholders through effective implementation and international cooperation.

Here is a transcript:

Rolf Claessen: Today’s interview guest is the executive director of the EUIPO, João Negrão. Before this role, he served as the president of the boards of appeal at the EUIPO. João has been with the EUIPO for 14 years after having worked at INPI, the National Institute of Industrial Property of Portugal, for nine years. Thank you very much for being here.

João Negrão: Thank you very much for having me, Rolf. It’s a pleasure.

Rolf Claessen: The consultation phase for the EUIPO Strategic Plan 2023 closed on February 16th. What are the main topics of the Strategic Plan, and what are the next steps?

João Negrão: Yes, indeed. As you probably know, the EUIPO has developed incredibly since 1994. We are now celebrating our 30th anniversary. While we have many achievements to be proud of, there is always room for improvement. We’re interested in looking to the future to see where we can make positive changes. We face challenges, such as the current political and economic situation, which generates levels of uncertainty and volatility regarding the demand for trademarks, designs, and now geographical indications. Since we are a self-funded organization, we need to be very careful in planning our activities and implementing our budget. Financial sustainability, efficiency, and effectiveness are key topics within the new strategic plan.

Emerging technologies, such as artificial intelligence, will also significantly impact our work and the IP system overall. We need to leverage these technologies to improve our efficiency and help our users apply for and receive better results in a timely manner. Another challenge is the expansion of the IP system in Europe, with new competencies being entrusted to the EUIPO, such as geographical indications. We need to implement these competencies excellently to continue providing high-quality services. Additionally, addressing IP infringements remains crucial, especially with the rise of new technologies and virtual goods.

Rolf Claessen: Thank you for mentioning the new competencies of the EUIPO. I want to discuss a potential new competency. On April 27, 2023, the new commission published its proposal for a regulation on standard essential patents (SEPs). The European Parliament voted in favor on April 28. If the council approves, the EUIPO might handle non-binding essentiality checks for SEPs and mandatory mediation before litigation. Given that the EUIPO has limited experience with patents, how do you think the office can find enough experts with SEP experience, and how do you see this new development?

João Negrão: We should follow the methodology we’ve used since the EUIPO’s establishment in 1994. We support the commission and legislators with our expertise and then implement their decisions. We’ve successfully taken on trademarks, designs, and now geographical indications. If entrusted with SEPs, we will use a project management approach to identify gaps and needs and act accordingly. It’s still early to say how this will unfold, but we will ensure effective implementation as always.

Rolf Claessen: Approximately 95% of SEP-related licensing is settled through negotiation, with only a small percentage going to court. Given the existing guidelines from the European Court of Justice, why is there a need for additional regulation?

João Negrão: The decision for additional regulation lies with the European Commission and legislators. Our role is to implement whatever they decide. We have full trust in their decisions and believe they will be beneficial for Europe.

Rolf Claessen: Let’s switch topics. The EUIPO launched a new mediation center for IP in November last year. What has been your experience so far, and what benefits does this offer to IP owners compared to other entities like WIPO?

João Negrão: The mediation center was indeed launched last November. However, the Boards of Appeal have offered mediation and conciliation since 2011, with positive but limited results. Expanding mediation to all proceedings at the EUIPO, including first instances, provides an additional, complementary way to resolve disputes. We plan to offer mediation actively after the cooling-off period in oppositions, ensuring that we add value without disrupting what already works well.

Rolf Claessen: As a practitioner, when is mediation offered? Is it actively mentioned, or do parties have to decide themselves?

João Negrão: Currently, in the Boards of Appeal, mediation is mentioned when an appeal is filed. For oppositions, we plan to offer it actively after the cooling-off period if no agreement is reached. This approach aims to add value without disturbing the existing, effective cooling-off system.

Rolf Claessen: 2024 marks the 30th anniversary of the EUIPO. What have been the most important achievements of the past 30 years, and what can we expect in the future?

João Negrão: Celebrating our 30th anniversary, we reflect on our journey from a small office to one with 1,200 staff members. We’ve provided effective protection for almost five million trademarks and designs, impacting innovation significantly. Looking forward, we will implement new competencies like geographical indications and continue to fight IP infringements through our observatory. Additionally, we will maintain our cooperation efforts to harmonize the IP system globally, supporting European businesses.

Rolf Claessen: The EUIPO has been managing designs since 2003 and organizes the DesignEuropa Awards to promote talent and innovation. What are the award categories, and what are the criteria?

João Negrão: The DesignEuropa Awards, now annual, recognize excellence in design across several categories: industry, small and emerging companies, lifetime achievement, and a new category for young designers. This event celebrates the remarkable work of designers in Europe and aims to engage the next generation. We see an increasing usage of the design system, indicating that our promotion efforts are effective. The awards will take place in Riga, Latvia, this year.

Rolf Claessen: I will post a link to the DesignEuropa Awards application form in the show notes. Finally, what are your personal main goals for the EUIPO and for yourself in the coming years?

João Negrão: My personal goal is to contribute to the EUIPO’s further development and ensure it continues playing a relevant role in the IP and innovation system. Drawing on my experience from various roles within national and international IP organizations, I aim to support the EUIPO in its next strategic cycle. Collaborating with talented colleagues at the EUIPO and in the broader IP community, I hope to effect positive change and improve the IP system for all stakeholders.

Rolf Claessen: Thank you so much for the great interview and your time. I am very impressed. Thank you for being on IP Fridays.

João Negrão: Thank you very much, Rolf. It was a pleasure.