Design and confidentiality: leveraging EU Designs in Romanian public procurement

One of the biggest challenges in public procurement is maintaining bid confidentiality while preserving a competitive edge. The intersection of EU design law and Romanian public procurement confidentiality rules is a nuanced and practically significant area. Given the current legal framework in Romania, we believe that EU registered designs with deferred publication can be used to support confidentiality claims in relation to specific technical elements of bids in local public procurement proceedings. However, this mechanism should only be seen only as an option, not a panacea.

EU Design legal reform

The legal framework regarding EU Designs has recently undergone a major reform through the implementation of Regulation (EU) 2024/2822 and Directive (EU) 2024/2823. We have provided an overview of the changes introduced by this new legislation in our previous article. [internal link: https://www.schoenherr.eu/content/the-new-eu-design-legislation-key-updates-and-changes]

While the possibility of requesting deferred publication of EU Designs existed under the previous legislation, the recent legislative changes should also be taken into account, including any changes to official fees and procedures.

Deferred publication – not now, later

When applying for an EU Design, the information provided in the application is made publicly available shortly after filing. However, the applicant may request that publication be deferred for a period of up to 30 months from the filing date or priority date, if priority is claimed.

If deferment is requested, then the publicly available information is limited to the design number, filing date and registration date, as well as the names of the applicant and, where applicable, the representative.

In practical terms, the design's images, description and appearance will be kept confidential until the deferment period expires or until an earlier publication request is filed by the applicant. In this regard, the key word is "confidential".

By opting for deferment, the European Union Intellectual Property Office (EUIPO) does not automatically publish the information after filing but instead delays its publication. As a result, important elements of the design will not be disclosed for what may be considered a substantial period of time. In practice, some rights holders choose this approach to safeguard commercial secrets until the final product enters the market.

Official fees for multiple application

If several designs are sought for protection, then a multiple application can be filed with the EUIPO for up to 50 designs. In case deferment is taken into consideration, then an official fee will be required for each design.

If this condition is not met, the application is at risk of being rejected by the EUIPO.

While this may appear to be a logical step, it bears mentioning, as it may impact the rights holder's approach going forward.

No disclosure, no problem

During the deferment period, the design holder possesses a registered, substantive intellectual property right, which can be verified via its registration number in the EUIPO database. That said, if a third party accesses the design record, no visual content is publicly available.

In turn, this creates a legally recognised intellectual property right that can be invoked in various proceedings, including to potentially support a confidentiality claim in public procurement bids.

It is worth noting that, while this approach may potentially apply to local legislation in other countries, this article focuses on Romanian legislation.

Public procurement proceedings in Romania are primarily governed by provisions set out in Law No. 98/2016. In this regard, Article 57 of Law No. 98/2016 provides that the contracting authority is obliged not to disclose information contained in the technical proposal, elements of the financial proposal and/or price or cost justifications transmitted by economic operators, provided such information has been indicated and substantiated as confidential.

One of the criteria for requesting confidentiality of a bid is clearly indicating that certain data is protected by intellectual property rights.

This aspect arises out of the local implementation of Article 21 of Directive 2014/24/EU, which provides that "the contracting authority shall not disclose information forwarded to it by economic operators which they have designated as confidential, including, but not limited to, technical or trade secrets and the confidential aspects of tenders."

Additionally, simply requesting that the bid be kept confidential will not suffice, as it may lead to arbitrary and unilateral exercises impeding transparency and the potential right to remedy.

As such, simply indicating that certain technical aspects within the bid are considered commercial secrets or protected via potential NDAs will most likely be dismissed, resulting in the bid's disclosure. Additionally, we believe that merely referencing a trademark would not suffice, as it entails publicly accessible information. A potential alternative may be referencing a patent; however, this approach may be challenging given its intrinsic high standard of requirements.

While the Romanian legislation does not clearly delimit which intellectual property rights may satisfy the threshold - simply referencing what rights fall under this category (i.e. trademarks, utility models, designs, patents, and copyright/holographic markings), we believe that EU Designs with deferred publication may be the key.

This reasoning comes as a consequence of the fact that i) the intellectual property right (i.e. the EU Design) is registered within a short period of time after filing and ii) its core elements are kept secret for up to 30 months pursuant to a request for deferment.

Catch-22

Even if a deferred EU Design is referenced, the offer in public procurement proceedings cannot be kept confidential in its entirety. As such, only certain elements of the offer will remain undisclosed.

This has been confirmed in the National Agency for Public Procurement's Guidance published on 7 March 2023[1], which emphasises that neither the technical offer nor the financial offer can be declared confidential in their entirety, and that the contracting authority is obliged to disclose elements of their content, including the offer price.

The novel and theoretical approach of merging intellectual property and public procurement should be explored as a means of addressing practical challenges.

author: Tiberiu Protopopescu