1 Seminar on the Internal Market Acquis for the Eastern Partnership Countries Nevena Mateeva Unit D2 - Industrial Property Rights, Internal Market & Services DG, EC Brussels, 1 October 2009 EU Legislation on Industrial Property Rights

2 Intellectual property (IP): Copyright Industrial property (trade marks, industrial designs, patents, utility models, geographical indications, plant variety rights)  Protection over intangible property (sign, idea, invention, etc.) Enable the holders of the IP rights to prevent unauthorised use of an intangible asset of potential commercial value. IP rights are territorial rights.

3 Relationship to other Community policies Importance of protection of IP rights for innovation, employment, competition and thus economic growth IP relates to many different EU policies (no single department in the European Commission) –Internal Market (free movement of goods, services, capital and people): DG MARKT –Common commercial policy (e.g. TRIPS Agreement, enforcement negotiations on Anti-Counterfeiting Trade Agreement ACTA): DG TRADE –Promotion of R&D and technology transfer (7 th Framework Programme): DG RTD –Competition policy: DG COMP –Industrial and innovation policy: DG ENTR

4 An Industrial Property Rights Strategy for Europe Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee, July outlines actions to ensure Europe has a high quality industrial property rights system in the years to come; - provides a horizontal strategy across the spectrum of different industrial property rights and includes initiatives on enforcement, innovation support for SMEs, and the quality of industrial property rights.

5 EU acquis Internal EU legislation (Directives, Regulations) - focus of the current presentation International agreements/protocols (TRIPS, Nice Agreement, Madrid Protocol, Geneva Act of the Hague Agreement, etc.) Case law (European Court of Justice)

6 EU legislation: Two-fold approach Harmonisation of laws of Member States (Directives) in order to avoid barriers to trade in the Single Market Creation of unitary titles for protection of IP rights with Community-wide effect through the filing of one single application for registration (Community trade marks, designs and [patents]) (Regulations)

7 Structure and Content of the Directives Harmonised provisions relate to: Definitions Protectability requirements (registration) (e.g. a design should be new and have an individual character; a trade mark must be distinctive; a patent must be susceptible of industrial application) Grounds for refusal of registration or invalidity (absolute and relative) Earlier rights Scope of protection – rights conferred by the IP title – exclusive right to use and prevent others not having the IP holders consent to use the right [subject to certain limitations - e.g. private use or experimental use for designs; need to indicate the intended purpose of a product/service for trade marks, etc.] Term of protection (10 years for trade marks - indefinitely renewable; 5 years for designs - renewable for one or more periods of five years each up to total of 25 years; 20 years for patents) Other specific provisions (e.g. a design should not be contrary to public policy or morality; a trade mark must be used, the principle of exhaustion of trade mark rights in the Community etc.) Relationship to other IP rights

8 Trade mark Definition: A sign to distinguish goods and services from others e.g. words, logos, letters, numerals, the shape of goods or of their packaging: “Coca Cola”, “Adidas”. capable of being represented graphically. Function: indication of origin

9 Trade marks Harmonisation and unification of trade mark law in Europe Fight against counterfeiting -Harmonisation of the various national trade mark laws: First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks) -Introduction of one comprehensive system: Community trade mark: Established by Council Regulation (EC) No. 40/94 on the Community trade mark, now Regulation (EC) No. 207/2009 (codified version) Two complimentary systems Protection only regarding registered trade marks (unlike US)

10 First Council Directive 89/104/EEC Does not provide full harmonisation but uniforms only those provisions that affect the functioning of the internal market  Harmonisation of the substantive requirements  Member States - free to fix provisions of procedure

11 Community Trade Mark Administered by Office for Harmonisation in the Internal Market (trade marks and designs) (“OHIM”) in Alicante, Spain Unitary character and uniform protection throughout the Community (one single registration ) Member States designate national courts (‘Community trade mark courts’) to hear disputes on infringement and validity of Community trade marks.

12 Industrial Designs Definition the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation

13 Industrial designs Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs

14 Industrial Designs No harmonisation in protection for spare parts – Proposal for a Directive of the European Parliament and of the Council amending Directive 98/71/EC on the legal protection of designs (“Spare Parts Directive”) --blocked in the Council

15 Community Design Council Regulation (EC) No. 6/2002 on Community designs Administered by OHIM Unitary character and uniform protection throughout the Community (one single registration ) Member States designate national courts (‘Community design courts’) to hear disputes on infringement and validity of Community designs. Two forms of protection: - registered Community design - unregistered Community design

16 Patents Patents are granted for inventions in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. Exceptions (e.g. discoveries, scientific theories and mathematical methods, etc.) Limited EU legislation/European Patent Convention

17 Current European Patent System Fragmentation – no single title; high costs and legal insecurity No specialised EU-wide jurisdiction results in expensive, unpredictable multi-forum litigation Result – Problems for functioning of single market, for enforcement of patent rights and for innovation and competitiveness

18 Draft Proposals Draft Agreement on the creation of a European and Community Patents Court - between the European Community, its Member States, and other Contracting States of the Agreement on the European Economic Area (EEA) Proposal for a Council Regulation on the Community Patent

19 Where are we now? Progress between Member States since April 2007 Key internal market priority for the Swedish Presidency (July to Dec 2009)

20 Other Patent Related Legislation Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions Regulation (EC) No 816/2006 of the European Parliament and of the Council of 17 May 2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems - allows the compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems; - implements a Decision of the World Trade Organisation (WTO) to give countries in need greater access to more affordable medicines.

21 Other Patent Related Legislation Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection productssupplementary protection certificate for plant protection products Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal productssupplementary protection certificate for medicinal products

22 Enforcement of IP Rights Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights

23 Thank you for your attention!

24 Contacts DG MARKT, Unit D/2 (Industrial Property Rights) Website: _en.htm _en.htm