Report of the IP Commercialization Committee

F. Stöckle (DE)

F. Stöckle (DE)

K. Vavekis (GR)

K. Vavekis (GR)

J. Lessard (GB)

The ability to protect and develop intellectual property - IP Commercialization - is key for enterprises around the world to serve their respective societies and provide social and economic progress
Successful IP commercialization happens when IP, innovation, and entrepreneurship act in concert and its impact multiplies manyfold in driving the growth of a knowledge-based economy.

To better address this issue, the need was felt to establish an IP Commercialization Committee (IPCC) which was set up at the C89 Council meeting in November 2020.

The IPCC’s goals are to consider and advise on all questions pertaining to, or connected with, IP commercialization including but not limited to matters such as IP valuation and monetarization, portfolio optimization, assignment of IP rights and licensing matters.

To this end, two working group were formed, one of which focuses on licensing education and certification for European Patent Attorneys, and the other of which deals with facilitation of licensing.

Working Group Licensing Education and Certification

European Patent Attorneys (EPAs) undergo extensive training and examination to develop the necessary competencies for preparing, filing and prosecuting European patents. This highly specialized skillset provides them with a unique insight into the strengths, weaknesses and potential uses of these intellectual property rights (IPRs).

However, patents only have value if they are exploited, typically by commercializing the products they protect or through licensing. Whilst training is available for the commercialization of patents and other IPRs, it is normally focused on particular aspects of commercialization and often not directed to EPAs.

The aim of this working group is to establish a certificate in commercialization. The main topics that will be covered by the certification include patent strategy, licensing, evaluation and valuation.
Members of the working group are currently investigating existing training programs, with a view to incorporating aspects of these programs into the curriculum for certification. The working group is also liaising with the Professional Education Committee (PEC) to incorporate the certification program into the institute’s education framework.

The intention of this certification is not to provide the accredited individual with the competencies necessary to prepare licenses or conduct valuations. Rather, it is intended to demonstrate the knowledge required to contribute effectively, with the EPA’s unique insight, in a professional team carrying out such activities.

Working Group Facilitation of Licensing

This working group was established aiming to identify the EU priorities concerning patent licenses and commercialization strategies. Its first task is the critical review of the EU action plan concerning Compulsory Licensing and Standard Essential Patents (SEP’s).

The emphasis of the EU plan is on achieving high transparency, predictability and legal certainty for groups of patents forming a technical standard necessary for the development of specific fields of technology. The declaration, licensing, enforcement and litigation of SEP’s are currently attracting great interest because of the technological developments in many fields, such as IoT and automotive connectivity. Since these are tasks involving patent attorneys, the subcommittee is actively involved in educating EPA’s with the necessary knowledge and skills. The working group also intends to collaborate with the Litigation Committee on these tasks.

In addition, the members of the subcommittee are working on the position of the EU action plan to enforce a “rapid pooling of critical IP in times of crisis system“ meaning a European Compulsory Licensing. Until now this was only handled by National Law of the member states and this might cause an opposition by the pharmaceutical sector.

Finally, the working group will attempt to establish and promote EU funding initiatives for research and development competitive programmes on the IPR sector and will prepare European Patent Attorneys with the necessary skills.