In recent years, the search for more sustainable energy sources has significantly boosted the installation of solar photovoltaic systems worldwide, with China leading this growth. This increase has been accompanied by a significant rise in patent applications to protect these innovations. The challenge going forward will no longer be merely to generate more energy, but to transport and store it efficiently. Governments, universities, and companies must focus their efforts in this direction, protecting innovations from an intellectual property perspective.
Solar photovoltaic technology has shown exponential growth. In 2023, 447 GW of photovoltaic capacity was installed worldwide, an 87% increase from 2022. This technology dominates the renewable energy sector, accounting for 78% of new installations in 2023. This growth is expected to continue, reaching 5 TW by 2028, driven by the push toward a more decarbonized economy amid growing environmental concerns and geopolitical uncertainty.
However, growth is not uniform across the globe. China accounts for 56.6% of new photovoltaic capacity installed in 2023, with 253 GW. The United States follows with 32.4 GW, while Spain ranks sixth with 8.9 GW, behind Brazil, Germany, and India.
In terms of research, new technological developments, and patents related to photovoltaic electricity generation, a total of 144,788 new patent application families have been published worldwide since the beginning of 2021, representing an increase of nearly 150% in the number of published patent application families compared to the previous four years.
Of all these families of patent applications, approximately 72% originated in China, 10% in the United States, and less than 10% in Europe. Thus, China is demonstrating its technological dominance, not only in terms of the installation of new photovoltaic production capacity but also in terms of research into new technologies in this sector.
Europe faces several challenges not only in the installation of new photovoltaic capacity, but also in renewable energy generation in general, particularly wind and solar power.
One of the main challenges is the grid's capacity to transmit the energy generated. The current power grid is often unable to handle all of the energy produced by new facilities, which calls for greater investment in the development of grid infrastructure in Europe.
It is crucial that industry, universities, research centers, and European governments step up their efforts to develop technological solutions that will enable better utilization of the renewable energy generation capacity that is currently being installed and will be installed in the coming years.
To strengthen European industry in this technological race, in addition to facilitating and simplifying access to public funding sources and tax incentive programs for companies that conduct their own R&D, it is vital to promote a culture of industrial property rights, through which industry can see with crystal clarity the beneficial effects of adequately protecting its intangible assets, in terms of positioning its products in the markets, accessing public and private funding, enhancing its reputation and prestige, and providing effective protection against unauthorized use of its assets.
This effort to promote a culture of industrial property encompasses both the public and private sectors. Government agencies, through their respective patent and trademark offices, are doing commendable work in promoting this culture of industrial property. Furthermore, it would be desirable to allocate more resources to specialized law enforcement units and to increase the number of courts specializing in industrial property.
The private sector, for its part, through various legal consulting firms and law firms specializing in intellectual property, can and should promote companies’ understanding of the essential aspects of intellectual property, encouraging them to protect their most valuable resources—their intangible assets.
All of these efforts to promote a culture of industrial property will provide a greater incentive to strengthen European industry and achieve greater technological development.
Bosco de la Vega Churruca, Associate in the Patent Practice Group at ELZABURU
June 1 marked the first anniversary of the launch of the Unified Patent Court (UPC). And although it got off to a start amid considerable uncertainty regarding its acceptance and operation, it appears to be overcoming some initial problems and gradually finding its footing.
Its decisions have an impact on the 17 member states participating in this agreement, which will soon number 18 with the addition of Romania. In its first year, the TUP has initiated more than 370 cases, including one as significant as the one involving the patent for the video referee system used by UEFA in soccer matches.
When the TUP was launched, there were some doubts about how widely it would be accepted. Currently, all of its divisions are already up and running, although it is true that some have received very few cases—or even none at all—so far.
One of the reasons why there isn't much activity in this area is that, although plaintiffs are aware of the TUP's ability to centrally revoke a patent and enforce it in the event of infringement, they sometimes feel more secure litigating in national courts.
Even so, it is likely that the system will gradually become established, with well-thought-out decisions that help build trust among potential users, and that the technical issues identified initially will be resolved. It would also be advisable to expand the range of courses available to help users better understand the tribunal and its procedures.
So far, the technology sector with the most cases is the one related to electronic and electrical technologies, particularly in infringement lawsuits. In contrast, companies in the pharmaceutical/chemical/biotech sector are not as active as expected; the reason may be that they prefer to wait until the system is more established.
Another significant point is that the Munich-based local division accounts for one-third of all cases filed. This may be due to the fact that German courts have extensive and proven experience in this type of litigation, combined with the fact that German is the language of 45% of the proceedings initiated to date.
The truth is that this concentration of cases in the Munich division creates a certain imbalance in the system, since it was designed to be an international and decentralized court. Perhaps the opening of a branch of the Central Division in Milan, scheduled for the end of this month, will help even things out.
An important factor to consider before filing a lawsuit is the financial aspect: this is because both court fees and the costs of professional representatives and attorneys can be quite substantial.
Although our country is not a party to the TUP agreement, there are Spanish companies involved in various proceedings, both as defendants and as plaintiffs. In all cases, TUP decisions are valid only for participating countries and therefore cannot be enforced in Spain. For them to be enforceable in Spain, legal action would have to be brought before Spanish courts.
Therefore, the Unified Patent Court needs to establish itself so that potential users of the system can begin to place greater trust in it. The goal is for it to eventually become a true benchmark in Europe when it comes to taking legal action to protect the rights of patent holders.
Pedro Saturio, European Patent Attorney. Deputy Director of the Patent Division
When my father was diagnosed with cancer at the most advanced stage, Stage IV, a member of the Palliative Care Unit staff asked him what he thought. “When it’s your turn, it’s your turn,” he replied. Indeed, there is an element of chance. But there is also a great deal of science involved.
As you read these lines, your cells are dividing, and every time a cell divides, it has to read a DNA molecule containing more than 3 billion base pairs. As we age, this amazing and nearly perfect reading machine—known as the DNA replication machinery—begins to deteriorate, leading to the accumulation of mutations in our cells. Often, these mutations occur in parts of the gene that are not considered relevant to normal cell division and growth. In those cases, we can rest easy. The problem arises when these mutations or reading errors occur in a gene that is important for normal cell division and multiplication.
In that case—which, for my father, was a colloquial expression of resignation and stoicism—an abnormal proliferation of our cells is triggered. This is what we call cancer, a common denominator for up to 200 different diseases affecting our cells, most of which are very different from one another. If these mutations accumulate in the wrong places in our DNA, then the diagnosis that no patient wants to hear already has a name.
Therefore, we cannot prevent the development of some form of cancer over the course of our lives. What we can do, however, is “reduce the odds” that chance—as my father used to say—deals to our bodies. Habits such as being overweight due to a sedentary lifestyle and/or a poor diet, alcohol consumption, or smoking and its carcinogens (which are responsible for more than 30% of tumors and about 15 different types of cancer) increase the likelihood that cellular mutations will occur in dangerous areas of our DNA. Consequently, we must be fully aware of the role that risk prevention can play. About 50% of current cancers could be prevented by changing our lifestyles.
Medical advances help us live longer, but longer life expectancy increases the likelihood that we will face cancer. In the European Union, 31% of men and 25% of women will be diagnosed with cancer before reaching the age of 75; cancer is currently the second leading cause of death worldwide, surpassed only by cardiovascular disease.
In an era when almost all of us are aware of the growing prevalence of cancer (and when efforts are being made worldwide to combat this group of diseases by seeking to reduce the side effects of treatments and improve patients’ quality of life), industrial property rights play a fundamental role in cancer research. Accurate diagnosis, effective treatment, and multifaceted approaches—the best medical weapons against the disease—are not a matter of chance, but rather the result of advances in biomedical technology.
Patents are exclusive rights granted to inventions that are new, inventive, and have industrial applicability. In exchange for these exclusive rights (which allow companies to recoup their investment and finance future research), all patent applications are published, thereby revealing the technical details of the advancements they contain. Therefore, intellectual property rights not only protect these innovations but also attract investors and foster collaboration and technology transfer between research institutions and industry. It’s a win-win situation. The person who makes a new breakthrough wins, and the rest of us benefit as a result: the pharmaceutical and medical sectors, the public sector, and the general population.
February 4 marks World Cancer Day. To mark the occasion, the European Patent Office published a new study,“https://link.epo.org/web/publications/studies/en-patents-and-innovation-against-cancer-study.pdf,” which highlights how oncology-related inventions have increased by more than 70% between 2015 and 2021. This percentage was calculated based on the number of international patent families (applications that protect the same invention, including a published international patent application, a patent application published by a regional patent office, or patent applications published by two or more national patent offices). In addition, the European Patent Office has launched a free-access platform, Technologies combatting cancer | Epo.org, where users can access the latest patent applications grouped by diagnosis, prevention and early detection, treatment, etc., thus providing an extremely useful tool for staying up to date and thereby promoting knowledge transfer and faster progress in this field.
The European Patent Office report highlights that, since the 1970s, more than 140,000 inventions related to cancer have been published. It also notes that, between 2015 and 2021, the annual number of international patent families increased by more than 70%, which equates to an annual growth rate of 9.34%. All this growth in innovation has been accelerated by advances in biotechnology and information and communication technology (ICT), as well as increased investment, international collaboration, data sharing, and regulatory incentives. Technologies such as gene therapy, non-coding nucleic acids, immunotherapy, and targeted therapies are revolutionizing cancer treatment and care. In addition, advances in cancer diagnosis, such as liquid biopsies, are showing 20% annual growth among international patent families. These biopsies make it possible to detect circulating tumor DNA in the blood, among other things, and represent the most active area in biomarker patents, with more than 2,000 international patent families in 2021, thereby improving early detection rates—which are essential so that many patients, like my father, do not receive what amounts to a death sentence along with their diagnosis.
The United States stands out as the undisputed leader in oncology-related innovation, accounting for nearly 50% of all international patent families filed from 2002 to 2021. The 27 Member States of the European Union rank second, with an 18% share. Spain ranks among the top 10 most innovative European countries in the field of cancer, coming in ninth with 1,539 international patent families filed over the past two decades, behind more active countries such as Germany and the United Kingdom.
In Spain, the Spanish National Research Council (CSIC) stands out, with 184 international patent families filed. Universities and public research organizations make an impressive contribution to this effort, filing one out of every three international patent families. This highlights a trend: pharmaceutical companies are increasingly dependent on basic and preclinical research from universities and public research organizations.
Cancer treatment technologies encompass a wide range of methods and tools. Among them are traditional approaches, such as surgery, radiation therapy, and chemotherapy, which have been used for many years and continue to be studied to further increase their effectiveness and reduce their side effects.
Having accompanied patients to the chemotherapy unit several times, you think about the will to live that we all have and how brave the patients are as they undergo treatment without knowing whether that cycle will continue to be effective or not; knowing that the treatment affects both cancerous and healthy cells, and that each component administered to them can cause various side effects such as weakness, neuropathy, anemia, diarrhea, mouth sores, cuts on the fingers, extreme dryness of the skin, or some permanent damage to various organs. These are a range of very intense feelings and sensations for those “on the outside,” which cancer patients learn to put into perspective in those treatment rooms.
The normal reaction upon receiving a cancer diagnosis is to start looking for information on the subject, reading articles, checking survival statistics, and learning about treatment techniques… Unfortunately, the reality is very different. There are many types of technology still under development and undergoing clinical trials, such as immunotherapy (with modified natural killer cells standing out as strong candidates for the development of universal therapies), targeted therapy, and other biological approaches—such as direct elimination, gene therapy, non-coding nucleic acids—as well as alternative treatments, such as radiolabeling or alternating electric fields for brain tumors. These technologies aim to understand the molecular and genetic mechanisms of cancer and to use the immune system or specific agents to combat it. It’s as if they were helping the human body fight these harmful mutations on its own. One example of this, which is advancing at full speed, is vaccines that recognize tumor neoantigens—tumor-specific antigens—which could become a potential treatment for different types of tumors and make treatment accessible to a larger number of patients. Undoubtedly, these are all promising technologies, but they are still in the research or approval phase or are not yet available to all patients or for all types of cancer.
Just a month ago, an article was published presenting the results of the largest genome sequencing program for cancer. This combined analysis of genomic and clinical data from 13,000 cancer patients makes it clear that genome sequencing can help tailor treatment approaches for patients. Information and communication technologies related to cancer—which play a very important role in its diagnosis and treatment, particularly through the field of bioinformatics—can also help identify biomarkers or targets for drug development. This is the fastest-growing technology sector in terms of the number of patent applications filed. Thanks to their ability to process and analyze large datasets, technologies such as artificial intelligence (AI) and big data enable us to take more precise and personalized approaches to cancer treatment, as well as gain a better understanding of its genetic and molecular basis.
Looking a little further into the future of AI, it offers enormous potential for the rapid and accurate identification of cancer types, stages, drug resistance, and genetic characteristics through the use of machine learning algorithms. These advances are essential for improving outcomes, enabling personalized treatment plans, and monitoring disease progression—and innovators are well aware of this, as the number of patent applications in this sector of oncology has grown impressively since 2015 (particularly in the United States and China).
Therefore, we can be confident that tumor analysis tools and diagnostic methods will continue to advance and that, thanks to them, we will be able to anticipate cancer, detect it at an earlier stage, minimize cases like my father’s, and ultimately manage or treat this entire group of diseases we call cancer.
All of these goals are within the reach of research, but achieving them will require significant resources and the collaboration of everyone involved in this progress. The more resources we can secure for research, the less time it will take us to reach these goals. Cancer affects us all, and therefore it is our responsibility to make these advances a reality as soon as possible.
My father, as a true innovator, nuclear physicist, and OECD diplomat, was always very enthusiastic about all the patents, studies, and articles I told him about, and he took pride in the fact that his daughter might, in part, be involved. He knew he wouldn’t live to see these innovations applied to his own treatment, but he firmly believed that, in the not-too-distant future, advances in oncology would be decisive—advances significant enough to make it possible to challenge cancer and even defeat it.
May this article serve as a tribute and an expression of my deepest gratitude to everyone diagnosed with cancer (no one truly knows how strong you are—and each of you overcomes it in your own way!), family members (having been one of them myself until not long ago), researchers, healthcare workers, volunteers, investors, and everyone who makes it possible for us to stand up to cancer more and more every day.
Marina Reig, Associate at ELZABURU
Posted on the AseBio Blog: Cancer: We've Hit It, and Soon We'll Defeat It! | AseBio
Whether you're a freelance professional, an SME, a large engineering firm, a research institute, or a university, you've likely wondered how to make the most of the results of your R&D efforts and investments.
Developing technologies that are suitable for industrial application and offer solutions to technical problems of various kinds is not an easy task, nor is it within the reach of anyone who does not devote a significant amount of resources (in terms of training, time, and funding).On the other hand, even if you do not wish to directly commercialize the results of your research but rather intend to use them exclusively to carry out your own business activities, it is sometimes difficult to keep a particular technology secret, since competitors can easily gain access to it simply by analyzing your products through reverse engineering.Therefore, in the course of your research activities, you may find it necessary to patent your technology to protect your developments from unauthorized exploitation by third parties.And this is where the role of the patent attorney becomes particularly important.A patent agent—and specifically a European patent agent—is a person with a background in science and/or engineering who is able to speak the same language as a company’s R&D teams, understand the core of each technological development, and identify where protection should be focused.Furthermore, a patent attorney is someone with legal training in patent law who understands the nuances and risks involved in the patent application process before the relevant national or regional patent office and is capable of providing advice to ultimately secure the desired protection for the technology.A patent agent can intervene in opposition proceedings against third-party patents or defend your patent when a competitor opposes it, navigating with ease through complex proceedings where technical and legal factors are of paramount importance.Likewise, a patent agent can work closely with attorneys in invalidity proceedings where the validity of a patent is at issue, or in infringement proceedings where a technical-legal opinion is required regarding the merits of the alleged infringing acts.For this reason, if you want to successfully implement your strategy for protecting the technology you have developed, it is always a good idea to seek the advice of a patent attorney.
Bosco de la Vega, Associate at ELZABURU.
The Unified Patent Court (UPC) and the Unitary Patent came into effect on June 1, 2023, so it is now possible to obtain some data and conduct a preliminary assessment.
As for the Unitary Patent, requests for unitary effect to date have exceeded 13,000, representing approximately 30% of the European patents granted during that period—a fairly significant percentage.
It is also worth noting that the most commonly chosen language for the translation of the text of the granted European patent—which must be submitted with the application for a Unitary Patent—is Spanish (accounting for 28.5% of the total). This data may indicate that many applicants for a Unitary Patent are also interested in obtaining validation in Spain, for which they can use that Spanish translation.
The EPO has made the necessary adjustments to the Register and the European Patent Bulletin in order to include the relevant information on unitary patents.
As for the TUP, there have been about 80 cases filed, spanning various technological fields, primarily in the pharmaceutical, telecommunications, and electronics sectors.
Oral proceedings have been held on infringement claims in some Local Divisions (such as Munich, Vienna, and Helsinki) and on a patent invalidity claim at the Paris office of the Central Division.
There have already been some interesting decisions. For example, the Helsinki Local Division has ruled that “opt-out” withdrawals (known as “opt-ins,” which bring a European patent back under the jurisdiction of the UPC) are not valid for those patents for which the parties had filed national claims before the UPC began operations.
In addition, the TUP Appeals Court in Luxembourg has issued its first decision, in which it ruled that the time limit within which the defendant must file a response to the complaint begins when the plaintiff has submitted all the documents.
Furthermore, it was also agreed during this period that the new section of the Central Division of the TUP will be located in Milan (instead of London, and alongside the Paris headquarters and the Munich section), although it is not expected that the Milan section will be able to receive its first cases until June 2024. The cases assigned to Milan will be those in Section A of the International Patent Classification (“Everyday Necessities”), excluding Supplementary Protection Certificates, which will fall under the jurisdiction of the Paris headquarters.
The Unified Patent Court and the Unitary Patent are now operational and in effect. We will need to keep a close eye on the UPC’s initial orders and decisions, as well as on how its various divisions apply their procedures, as these may shape the future of the system.
Pedro Saturio, European Patent Attorney. Deputy Director of the Patent Division
On October 13, 2022, the Administrative Council of the European Patent Organization adopted a series of amendments to the Implementing Regulations of the European Patent Convention (EPC). Among these changes are those affecting the rules regarding notifications issued by the European Patent Office (EPO), which will take effect on November 1, 2023.
Subsequently, on March 6, 2023, the OEP issued its own statement on the matter, explaining how those changes would be implemented.
Under current rules, a document issued by the OEP is considered to have been served on the tenth day following its delivery to the OEP’s postal services, or on the tenth day following its transmission via electronic communication. This measure was taken to account for possible delays resulting from the delivery of documents by regular mail.
However, today, the increasingly widespread use of the OEP’s “Mailbox” service—which was launched in 2011—has made communications immediate. For this reason, in order to adapt to the principle of instant electronic notification, the rules have been revised, and as of November 1, 2023, documents will be considered served on the date printed on the communication, if sent by mail, or on the date of the electronically served document, thereby ending the so-called “10-day rule.”
Given that the date of notification of the document is the date from which the period established in that document begins to run, these changes have a direct effect on the calculation of time limits. For example, if we consider a notification from the OEP dated April 11, 2023, which sets a 4-month response period, under the current regulations it will be considered served on April 21, 2023, and the response period will end on August 21, 2023. Under the changes that will take effect in November, the document will be deemed served on April 11, 2023, and the response period will end on August 11, 2023.
Therefore, one of the first consequences of the elimination of the “10-day rule” is that deadlines are shorter; consequently, special care must be taken when completing the relevant procedures, especially in cases where the process drags on until the very end of the established deadline.
On the other hand, these changes result in greater simplicity and uniformity compared to proceedings in other jurisdictions, since this “fictitious” 10-day extension of deadlines applied only to proceedings before the OEP.
At ELZABURU, our team of professionals and our systems are already prepared to implement the changes effective November 1, 2023, ensuring that the necessary actions are taken to safeguard our clients’ rights within the established deadlines.
Dr. Ma Mercedes García, European Patent Attorney, Associate Partner at ELZABURU.
The system known as the “European Patent with Unitary Effect” (or “Unitary Patent,” as it is commonly referred to) entered into force on June 1, 2023.
This system consists of two European Union Regulations (EU 1257/2012 and EU 1260/2012), which define:
Under this new system, applicants for European patents who so desire may request that their European patent granted by the European Patent Office (EPO) have unitary effect in all countries that are participants in the system at that time. This means that the European patent will be considered in those countries as a single patent for all of them. One of the most immediate consequences of this system is that, if the unitary route is chosen, it will no longer be necessary to proceed with so-called national validations in the participating countries. However, if the applicant does not wish the granted European patent to have unitary effect, it will still be possible to validate the patent in those countries through the national route, as has been the case until now. In addition, it will still be necessary to validate the patent in countries that are not part of the system, such as Spain, the United Kingdom, Switzerland, Norway, Poland, Iceland, and Turkey, among others.
To benefit from this new system, applicants for European patents may request unitary effect within a non-extendable period of 1 month from the date the EPO grants the patent. This request, which does not entail the payment of any official fee, must be accompanied by a translation of the granted European patent into English, if the European patent was granted in French or German, or into any of the official languages of the EU, including Spanish, if the European patent was granted in English.
As of today, the countries that have already ratified the system—and are therefore part of the unitary patent system—are: Austria, Germany, Belgium, Bulgaria, Denmark, Slovenia, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, and Sweden, while the ratification process is underway in Cyprus, Slovakia, Greece, Hungary, Ireland, the Czech Republic, and Romania. Spain has not joined this system, although Spanish applicants for European patents will be able to benefit from it, just as applicants from any other country in the world can.
When deciding whether or not the unitary effect is appropriate for a granted European patent, the following considerations must be taken into account:
Advantages of the unitary effect:
Disadvantages of the unitary effect:
Finally, a very important point: As of June 1, 2023, the UPC will have exclusive jurisdiction over all unitary patents, but also, by default, over all traditional European patents—both future ones and those already granted by the EPO prior to the system’s entry into force. This means that European patents already granted may at any time be subject to invalidation proceedings before the UPC and may be invalidated in all countries where they are in force and which are party to the system.
To prevent this from happening, and for an initial period of 7 years from the system’s entry into force, holders of traditional European patents—that is, those that have followed the national validation route—may file a request to “opt out” of the jurisdiction of the UPC; however, it is not possible to request an opt-out for a unitary patent. This “opt-out” request entails the following:
Consequently, all holders of traditional European patents—both those already granted and those to be granted in the future—must decide whether they wish to request an “opt-out” for those patents.
Naturally, it is not possible to offer general advice that applies to each and every case; each case must be examined individually, weighing the pros and cons for that specific situation and taking into account economic, commercial, and strategic considerations. To this end, ELZABURU has professionals who are already recognized as registered representatives before the TUP and who, therefore, can represent our clients before the Unified Patent Court and provide them with appropriate advice. For more information, please contact ELZABURU.
ELZABURU S.L.P.
In the development of any business today, it is essential to incorporate an appropriate strategy for protecting a company’s intangible assets into its strategic plan. This not only provides protection in the marketplace against potential attempts by third parties to copy the company’s assets but also facilitates access to financing from investment funds that may be interested in investing in a particular project.
Intangible assets are protected through the various existing forms of industrial property protection, depending on the nature of the intangible asset to be protected.
In the case of technology, these intangible assets are often protected through the legal mechanisms of patents and utility models (in jurisdictions where the latter exists).
For any company considering a growth strategy and potential international expansion, protecting its technology through patents or utility models is crucial, and obtaining this protection in different jurisdictions requires a significant outlay on official fees payable to the various agencies responsible for processing and granting the corresponding titles.
To facilitate companies’ access to patent and utility model protection and to promote the positioning of Spanish industry in various markets, the Spanish Patent and Trademark Office (OEPM) has once again launched its grant program to facilitate access to protection for technological developments, both in Spain and in other countries.
In Spain, a subsidy program is available for small and medium-sized enterprises (SMEs) and individuals, covering up to 90% of the official fees paid to the Spanish Patent and Trademark Office (OEPM) for patent or utility model applications published in the Official Industrial Property Bulletin (BOPI) in any of the years 2020, 2021, or 2022.
For protection outside of Spain, subsidies of up to 80% (up to 90% for small and medium-sized enterprises and individuals) are available for fees paid in 2022 for European patent applications, international patent applications (PCT applications), or direct patent (or utility model) applications filed in other countries with the respective national patent offices.
The deadline for applying for these grants is May 25, 2023.
Applications can be submitted through the OEPM's online portal (https://sede.oepm.gob.es/).
We thank the OEPM for announcing its grant program once again this year, and we wish every success to all patent and utility model holders who wish to participate.
Bosco de la Vega, Patent Practice Associate
The European Commission has just unveiled a proposal for three new regulations of significant importance in the field of patent law. The proposal was drafted following an extensive consultation process with stakeholders, which was launched after the Commission published its Action Plan on Intellectual Property in November 2020 to support businesses, particularly small and medium-sized enterprises (SMEs).
According to the European Commission, the new regulations will complement the new unitary patent system, which will take effect on June 1, 2023, and are intended to make the patent system more effective within the European Union. The proposed regulations address the following aspects:
Essential Patents and FRAND Licenses
So-called standard-essential patents (SEPs) protect inventions that are part of a technical standard approved by an independent standards-setting organization. They are of great importance in key areas of technological development such as 5G and the Internet of Things.
Through its proposed Regulation, the Commission aims to promote greater transparency regarding portfolios of standard-essential patents and the granting of licenses for them on fair, reasonable, and non-discriminatory terms (FRAND licenses). Among the key new measures included in the proposal are the creation of a registry and database of SEPs, the implementation of a system for assessing their essentiality, and the establishment of a conciliation procedure for determining the amount of FRAND license fees, which would avoid the current lengthy and costly court proceedings. All of this would be overseen by a new “Competence Center” integrated into the European Union Intellectual Property Office (EUIPO), headquartered in Alicante.
Mandatory Licenses
Compulsory licenses are a legal mechanism that allows governments to authorize third parties to use patented inventions in cases of necessity, when patent holders refuse to grant voluntary licenses.
The new Regulation aims to harmonize the national compulsory licensing systems currently in force to complement other crisis management tools available to the institutions of the European Union.
Supplementary Protection Certificates
Through what are known as Supplementary Protection Certificates, it is possible to obtain an additional five-year term of validity for patents on pharmaceutical and plant protection products, in addition to the 20-year term applicable to all patents.
Supplementary Protection Certificates are granted by national patent offices, and the proposed new regulation seeks to centralize the examination procedure, which would be implemented by the EUIPO in collaboration with those offices. In addition, the proposal calls for the creation of a unitary Supplementary Protection Certificate that would complement unitary patents.
The new regulations proposed by the Commission must now be debated and approved by the European Parliament and the Council of the European Union. The debate is expected to be intense given the significant interests at stake, particularly with regard to essential patents and compulsory licenses. We will need to closely monitor the outcome of this process.
Carlos Morán, Partner at ELZABURU
Effective April 18, 2023, the U.S. Patent and Trademark Office will stop issuing paper patent certificates and will issue them electronically instead. For other types of intellectual property (such as trademarks), electronic issuance of certificates has already been in effect since last year.
In this way, it joins the practice already followed by the major patent offices (EPO, China, South Korea, etc.), which had already abandoned the paper format for their patent certificates some time ago.
During a transitional period, the U.S. Patent and Trademark Office will also issue a paper copy, but after that period, a paper copy will only be available upon payment of an additional fee.
This measure (which will save the U.S. government approximately $2 million annually) is also intended to reduce the environmental impact of printing the patent and mailing it to the patent holders by eliminating the use of paper and ink, as well as the mailing and shipping costs associated with its delivery. At the same time, it reduces the time it takes for the patent holder to receive their patent.
At ELZABURU, we applaud this decision by the U.S. Patent and Trademark Office, which is in line with the measures that government agencies are adopting to reduce, as much as possible, the environmental impact caused by traditional processes.
In this regard, ELZABURU is also committed to protecting the environment, having adopted a policy several years ago to reduce and eliminate paper consumption by implementing electronic records and phasing out paper-based systems in most processes and files.
Pedro Saturio, Associate Partner in the Patetes practice area