‘We need to deliver’: EUIPO’s João Negrão

The office’s executive director appears primed to face a tenure that could be marked by major changes—including the addition of SEPs, finds Muireann Bolger.

It’s been roughly six months since João Negrão officially took up the reins as executive director of the European Intellectual Property Office (EUIPO). But if he is feeling the pressure around this mini-milestone, it’s hard to tell from his upbeat mood.

Negrão’s appointment came at a turbulent time for the office, as it faced the fallout of a slump in applications in 2022—a 12% year-on-year dip that adversely affected the office’s revenues and expenditure.

But the Portuguese national is no stranger to tough challenges. In what he describes as his “career high to date”, he spearheaded the expansion of the EUIPO’s cooperation with national and regional EUIPO offices and the creation of the European Union Intellectual Property Network in 2011.

This paved the way for the implementation of highly advanced IT systems and tools, such as TMview and DESIGNview, in more than 30 languages.

Over the past decade, he has also led the creation of the ‘Convergence Programme’, which harmonises practices at EU level, as well as the expansion of the EUIPO’s international cooperation activities.

Unpredictable times

Smiles aside, Negrão is forthright in his first interview with WIPR about the “volatile period” affecting the office, and the “challenging timeline” ahead.

“It is difficult to predict what might happen next, because we don't know what will be the next conflict or event that will have a major global impact,” he says.

For context, Negrão points to the turmoil in the Ukraine and the Middle East, arguing that these unexpected and tragic developments have dealt a huge blow to economies worldwide, and to innovation.

“That does affect the EUIPO, and we have already seen a high level of volatility in terms of demand for IP rights,” he adds.

Yet, the economy was not the only source of uncertainty in recent months. Last year’s leadership contest for Negrão's coveted role drew sharp scrutiny, and a fair share of controversy.

In November 2022, the EUIPO unexpectedly declined to re-elect Negrão’s predecessor Christian Archambeau for another term as executive director of the EUIPO as that year’s underwhelming performance began to hurt financially.

Archamabeau decried the decision—telling WIPR that his exit was due to “exogenous circumstances rather than performance”.

In short, he argued he was the fall guy for matters beyond his control, including the “confidence crash” put in motion by Russia’s invasion of Ukraine.

To compound matters, a former rival in the EUIPO leadership race later complained about the transparency of the selection process to the European Anti-fraud Office following Negrão’s appointment.

Given these fraught events, it’s little wonder that Negrão’s gaze is fixed firmly on the future.

SEPs: Why the past bodes well

And there is plenty to do. Hot on the heels of this interview came the announcement that the EU Parliament had voted in favour of the heavily criticised proposals to regulate standard essential patents.

Negrão is diplomatic when broaching the proposals, pointing out that it is business as usual for the IP agency.

“We will, of course, provide our technical expertise, but our role is to implement the rules according to whatever the legislators decide,” he adds.

However, he does draw a parallel between this situation and the adoption of the design framework two decades ago, arguing that this precedent could quell the concerns of many.

“There were questions and doubts about the capacity of the EUIPO to implement such different IP rights to trademarks. In the end, the design system was implemented in an excellent way—so I see no reason for it to be different this time,” he insists.

“We will apply the same methodology that we always have; we will create an implementation project here that identifies the tasks that we have to implement and deliver in this specific area.

“And then, we will be ready to start operating the new framework before the deadline,”

A ‘lot of work to do’

After all, he adds, the EUIPO is getting plenty of practice in implementing new competencies and legal frameworks.

These include a mediation centre to provide alternative dispute resolution (ADR) services for disputes free of charge, which launched back in November.

In an eyebrow-raising development, the mediation service offered by EUIPO is not necessarily confined to the IP rights that it manages (trademarks and designs) but, upon request, may also cover other rights, eg, copyright, domain names, and even patents.

At the time of the launch, Negrão lauded the centre as a “major step” in helping avoid “expensive, unpredictable litigation”.

Fast forward a few months, and it’s fair to say the tone is more muted.

There is, says Negrão “still a lot of work to be done” with “a long way to go”.

This, he explains, is partly because it has been “far from easy” to convince parties’ representatives that this is also a viable way to try to solve disputes when compared to more traditional routes.

Added to that, the EUIPO’s mediation services is limited to its boards of appeal. However, plans are underway to extend it to the cancellations division this year, and then later to the invalidity and opposition divisions.

While it’s early days, Negrão believes that the EUIPO’s mediation services could potentially exert a profound impact on the IP system.

Pointing out that around 40% or more of all trademark applications now come from outside the European Union, he adds these tend to bring a slew of cross-border disputes to the EUIPO’s door.

The mediation centre, he insists, is the ideal remedy for many of these quarrels.

“Parties don’t need to go through the traditional process of getting a decision from the EUIPO. Instead, they benefit from an expert's support and a decision from the mediation centre that would allow them to come up with a win-win kind of situation where they don't have to be the winner or loser.”

“The development of these services is a worthwhile investment,” he continues, “and it could be expanded to all types of IP rights”.

GIs: Great expectations

While it may be some time before the office wades into patent disputes, geographical indications (GIs) are set to keep Negrão and his team busy.

Following years in the making, the EU finally greenlit GI protection for non-agricultural crafts and industrial products made within member countries.

The new regulation, which offers GI protection for up to 500 regional EU goods, was confirmed almost unanimously in a plenary session of the European Parliament and the European Council in September.

So far, the reaction has been highly positive, according to Negrão, who also notes that “expectations are high” and that “we need to deliver”.

One challenge is that these are a new type of IP rights, so the onus is on the EUIPO to “develop skills internally” to be able to deal with these applications.

A second challenge, adds Negrão, is in dealing with a different type of stakeholder.

“We are used to working with trademark and design users, and we have a number of user associations that are well established in these areas of trademarks and designs.

“We need to establish the same types of relationships with different types of users—producers, regional producers, local producers—and we need to be able to gather them on a regular basis, so that we gain a better understanding about what they expect from us.”

AI and the office of the future

Unsurprisingly, new and emerging technologies are also front of mind when grappling with future challenges.

Turning to generative AI and the questions it poses for IP and ownership, Negrão harbours few illusions about its ‘huge impact’, or the dearth of research on this game-changing technology.

As a result, the EUIPO is launching a study on the impact of AI—generative AI in particular—with an emphasis on copyrights.

“It is very difficult to predict what we will see, even in the next year, given the current pace of technological developments. This poses a challenge that we need to address,” adds Negrão.

Counterfeits and next steps

At the same time, the threat posed by tech-savvy counterfeiters isn’t going anywhere.

“Counterfeiting is and will continue to be one of the main challenges that we will have in the next few years,” agrees Negrão.

In June, EUIPO released a report, revealing the alarming impact of counterfeits on clothing, cosmetics, and toy sectors in the EU.

For instance, the fashion sector lost nearly $12 billion ($13 billion) in annual sales (corresponding to 5.2 % of the sector’s overall turnover) last year.

And advanced technology is the blueprint for these criminals’ success.

“It's much more challenging, and difficult, to fight infringement of IP rights in the digital world. We know that AI might help us to work better, and in a smarter way, but that also helps counterfeiters to infringe IP rights,” says Negrão

A daunting task, certainly. But, as Negrão explains, the office also has a not-so-secret weapon at its disposal.

“EUIPO operates an observatory on IP infringement that works both as a platform and network that brings together public and private sector authorities, customs authorities, enforcement authorities, but also stakeholders and right owners. Together, they devise strategies and responses to fight counterfeiting.”

A large chunk of the observatory’s time is spent developing anti-counterfeiting tools, which has yielded the “very successful” IP enforcement portal enabling customs and enforcement authorities and rights owners to share up-to-date information.

“This is something that was brand new, and was very difficult to realise because right owners are not always willing to share because of the competitors,” says Negrão.

“However, it was a way for the EUIPO to act as an impartial entity putting together two important sides—right owners and enforcement authorities.”

Negrão explains that the EUIPO’s strategic plan for the next five years is next on his agenda—and he is determined that users should “have a say because they know best” what is needed to steer their businesses in the right direction.

“If EUIPO can help our users to do this, then I will be satisfied after five years,” he concludes.

But for now, it seems that Negrão learnt to expect the unexpected—and to deal with it accordingly.