COMMISSION STAFF WORKING DOCUMENT Accompanying the document Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions Europe’s next leaders: the Start-up and Scale-up Initiative Putting intellectual property at the service of SMEs to foster innovation and growth
Date: 2016-11-22
Institutions: Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, European Commission
Subjects: aid to undertakings, alternative dispute resolution, business start-up, company growth, entrepreneurship, intellectual property, single market, small and medium-sized enterprises, start-up

EN 

   EN 

   EUROPEAN COMMISSION  Strasbourg, 22.11.2016  SWD(2016) 373 final   COMMISSION STAFF WORKING DOCUMENT Accompanying the document Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions Europe’s next leaders: the Start-up and Scale-up Initiative   Putting intellectual property at the service of SMEs to foster innovation and growth {COM(2016) 733 final}  
 
 
PUTTING INTELLECTUAL PROPERTY AT THE SERVICE OF SMES TO FOSTER INNOVATION 
AND GROWTH 

INTRODUCTION 

This  Staff  Working  Paper  puts  forward  policy  actions  to  support  access  to  and  use  of 
intellectual  property1  (IP)  by  start-ups  in  Europe  –  and  more  generally  by  innovative  and 
creative  small  and  medium-sized  enterprises  (SMEs)  as  a  whole.  It  is  an  accompanying 
document  to  the  Communication  Europe's  next  leaders:  the  Start-up  and  Scale-up 
Initiative2. 

The key role of IP in the success of start-ups and innovative SMEs has long been recognised: 
it allows innovative businesses to appropriate the results of their creativity, inventiveness and 
R&D investments, and creates an incentive for further investment in innovation3. Recent data 
from  the  EU  Intellectual  Property  Office  (EUIPO)  show  that  businesses  using  IP  rights 
perform better, and this is particularly true in the case of SMEs. SMEs owning IP rights have 
almost  32 %  higher  revenue  per  employee  than  SMEs  that  do  not4.  They  also  expand  their 
workforce faster and pay higher salaries. IP is therefore key for smart and sustainable growth. 

Yet the same data show how few SMEs in the EU actually make use of IP: only 9 % of SMEs 
have registered IP rights, compared to 36 % of large companies5. Moreover, even those SMEs 
that do use IP tend almost exclusively to rely on national titles and make little use of the EU 
trade  mark  or  registered  Community  design,  while  only  0.3 %  of  SMEs  own  European 
patents6. SMEs do not use the IP system essentially because they do not see the benefit of it, 
they  lack the  necessary  expertise  and  they  find  that  procedures  are too  costly7.  The  need  to 
support  SMEs  in  accessing,  using  and  exploiting  the  IP  system  is  thus  an  important 
challenge8. 

that  an 

information  and  knowledge-based  economy  with  strong 

Given 
innovation 
performance  is  made  up  of  businesses  whose  most  valuable  assets  are  intangible,  all 
innovative and creative start-ups and SMEs need  to  be aware of the advantages  of using IP 
and the dangers of neglecting it9. Once protected, these rights have to be managed to generate 
value  and  thus  enable  innovation  to  play  its  full  role10.  As  more  than  a  third  of  EU  SMEs 

1 In this document, Intellectual Property encompasses all the options that exist for the protection of a number of 
intangible assets. The IP system thus includes formal IP rights granted by registration (such as patents, EU trade 
marks and geographic indications, informal IP rights (such as copyright) and other forms of IP protection (such 
as trade secrets and domain names), but the IP system also includes mechanisms and procedures to obtain and 
enforce IP rights and settle legal disputes. 
2 COM(2016) 733 of 22.11.2016. 
3 See Enhancing the Competitiveness of SMEs through Innovation (OECD, 2004). 
4 Intellectual property rights and firm performance in Europe: an economic analysis (EUIPO, 2015). 
5 Ibid. 
6 Granted by the EPO and validated in more than one European country. 
7 Intellectual property SME scoreboard (EUIPO, 2016). 
8 See SMEs and entrepreneurship: lessons from the global crisis and the way forward to job creation and growth 
(OECD, 2010). 
9 See https://www.iprhelpdesk.eu/library/case-studies for examples. 
10  See  specifically  for  the  cultural  and  creative  sectors:  Open  Method  of  Coordination  Member  States  Expert 
Group  -  Good  practice  report  on  innovative  instruments  to  facilitate  access  to  finance  for  the  cultural  and 
creative sectors (European Commission, 2015). 

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engage in innovation related activities11, there is clearly ample room for more SMEs to derive 
benefit from using IP rights. 

A variety of different strategies and support measures are applied by Member States in order 
to  encourage  and  help  SMEs  in  the  use  of  IP.  This  is  illustrated  in  the  annexed  'report  on 
existing  national  initiatives  seeking  to  improve  IP  civil  enforcement  procedures  for  SMEs', 
which is the result of a consultation process with Member States over the course of 2015 and 
2016. 
In the Single Market Strategy12, the Commission announced that it would come forward with 
EU-level  measures  to  support  the  use  of  IP  by  SMEs.  Delivering  on  that  commitment,  the 
Commission has now undertaken to put in place a package of IP-support measures for start-
ups  and  SMEs13,  which  will  have  the  effect  of  improving  coordination  and  consistency  in 
addressing sub-optimal use of IP by them across the EU. These measures comprise: 

(i) 

(ii) 

(iii) 

(iv) 

streamlining European IP awareness schemes  for SMEs and providing a cooperation 
platform for Member States; (see below section 1.1) 
developing an EU IP mediation and arbitration network for SMEs; (see below section 
2.2) 
encouraging  the  creation  of  European-level  insurance  schemes  for  litigation  and  IP 
theft, building on a common IP valuation method; (see below section 2.3) 
improving  coordination  of  IP  support  funding  schemes,  including  by  means  of  a 
possible  guidance  to  Member  States  and  by  developing  monitoring  methods  their 
impact.(see below section 3) 

This  Staff  Working  Document  articulates  these  measures  in  more  detail,  in  addition  to 
explaining  how  COSME  funding  will  be  targeted  (see  below  sections  1.2,  1.3,  and  2.1),  to 
encourage  start-ups  and  SMEs  to  use  IP.  The  measures  will  be  delivered  on  the  basis  of  a 
partnership  approach  between  the  relevant  Commission  services,  Member  State  authorities, 
the EUIPO and other relevant European IP stakeholders.  

1.  FACILITATING SME ACCESS TO IP 

1.1. INFORMATION AND AWARENESS 

Different  initiatives  at  EU,  national  and  local  level  exist  to  raise  awareness  on  IP14,  but  the 
challenge  is  to  ensure  messages  are  streamlined,  easily  accessible  and  that  they  address  the 
real  business  needs  of  innovative  SMEs.  This  will  require  better  coordination  between  all 
players; at EU level, a coordination platform will exchange experience, best practice and align 
messages across Member States. A similar effort of simplification and coordination needs to 
be undertaken within Member States. The activities of public bodies dedicated to IP – such as 
national IP offices, Patent Information Centres and national IP support coordination – need to 
be closely coordinated with business support instruments and innovation support. Awareness 
actions should be targeted at those SMEs that use innovation and consider expansion within 

11 European Innovation Scoreboard (2016). 
12 COM(2015) 550 of 28.10.2015, p. 15 and its Staff Working Document, SWD(2015) 202, pp. 68-71. 
13 COM(2016) 733, of 22.11.2016. For ease of reference, the four measures are repeated here. 
14  At  EU  level,  the  IPR  SME  Helpdesks  support  EU  SMEs  with  information  and  initial  guidance  on  IP  both 
within  the  EU  and  in  certain  non-EU  countries  and  regions  (China,  Latin  America  and  Southeast  Asia).  In 
addition, the EU and its Member States cooperate on IP support for SMEs through the IPorta2 project. 

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the  single  market  as  their  priority.  More  precisely,  targeted  and  streamlined  IP  information 
actions  should  be  more  effective  at  inducing  innovative  SMEs  to  make  best  use  of  IP 
protection. 

The  Commission  services,  in  partnership  with  the  EUIPO,  will  streamline  European  IP 
awareness  schemes  for  SMEs  and  will  support  exchange  of  best  practice  through  an  EU 
coordination  platform.  This  will  involve  the  development  of  a  common  portal,  of  common 
materials for information and training, and of common training of trainers. 

As  a  complementary  action  to  EU  level  efforts,  Member  States  could  internally  streamline 
their  national  IP  awareness  activities  and  coordinate  them  with  business  and  innovation 
support  schemes.  This  could  involve  mapping  existing  schemes  and  establishing  effective 
links between business schemes and innovation schemes and IP support measures. 

1.2. IMPROVING AND DEVELOPING IP PRE-DIAGNOSTIC SERVICES 

Awareness actions need to be complemented with more concrete actions to support SMEs in 
the  access  and  use  of  IP.  Some  Member  States  provide  individualised  advice  on  the  IP 
potential of a firm's intellectual assets within its specific market context (see Annex). These 
services,  known  as  IP  pre-diagnostic  services,  can  be  particularly  effective  as  a  way  of 
helping  SMEs  both  to  assess  the  value  of  their  intellectual  assets  and  to  include  IP  in  their 
business strategy. 

Such  services  should  be  available  more  broadly  in  the  EU  and  cover  all  IP  protection 
methods, without distinction between registered and non-registered rights. To this end, using 
COSME funding, the Commission services will finance a project of IP pre-diagnostic services 
to  be  implemented  in  a  coordinated  manner  with  Member  States,  the  EUIPO  and  other 
relevant European IP stakeholders15. It will build on existing experience, but will comprise a 
more thorough coverage of such services across the EU, and will systematically consider EU-
wide  IP  rights  within  the  whole  IP  spectrum.  This  measure  could  be  complemented  by  a 
Horizon 2020 funded project to deliver further IP services for SMEs and start-ups. 

Training  provided  by  the  EUIPO,  and  collaboration  with  relevant  stakeholders,  will  allow 
Member  States  to  scale  up  IP  pre-diagnostic  services  in  the  future.  The  focus  will  be  on 
innovative  SMEs;  hence  in  the  first  phase  the  IP  pre-diagnostic  will  be  made  available  to 
SMEs that have received the 'seal of excellence' under the Horizon 2020 SME Instrument16; 
though any extension of this scheme should reach out to a broader community of innovative 
SMEs, including those that already have IP rights. 

Between 2017 and 2019, the Commission services: 
-  in  cooperation  with  the  EUIPO,  will  establish  a  common  training  programme  for  IP  pre-
diagnostic service providers that will be rolled out in 2017; 
- will fund and monitor IP pre-diagnostic services, as provided for in the 2017 COSME work 
programme, with a view to developing – with Member State authorities and the EUIPO – an 
EU-wide service for innovative SMEs; and 

15  Under  the  2017  COSME  programme  budget,  EUR  4.3  million  is  devoted  to  funding  these  actions.  See 
C(2016) 7033 of 8.11.2016. 
16 The 'seal of excellence' is a quality label awarded to project proposals which were submitted for funding under 
Horizon  2020,  have  passed  stringent  selection  and  award  criteria,  but  could  not  be  funded  due  to  budget 
constraints. 

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-  will  report  in  2019  to  the  Member  States,  to  their  SME  envoys  and  to  the  European 
Enterprise Network on the impact of IP pre-diagnostic services. 

1.3. FUNDING FOR PATENTS 

Patents are expensive and the patent system can be complex for SMEs. Today, protecting an 
invention throughout the Single Market can be achieved through the European Patent Office, 
but  only  at  substantial  cost17.  In  addition,  European  patents  need  to  be  maintained  (and 
defended)  in  each  Member  State  where  they  are  validated,  increasing  the  burden.  Pre-grant 
costs and patent attorney fees represent an important barrier for SMEs and start-ups to market 
their  innovative  products  and  services  across  Europe.  In  view  of  these  factors,  it  is  not 
surprising that only 0.3 % of SMEs currently own European patents18. 

The  Commission  services  will  help  innovative  SMEs  and  start-ups  that  want  to  patent  in 
Europe using European patents. A pilot project will be launched to finance innovative SMEs19 
requesting and being granted patents. The subsidies will cover 50 % of the pre-grant costs for 
European patents as well as a part of attorney fees20. This will support innovative SMEs in the 
early  years  of  developing  their  innovative  products  by  significantly  reducing  patent  costs. 
This in turn should facilitate their access to finance and investment. 

Such  an  initiative  could  in  the  future  be  extended  to  other  European  IP  titles  (notably  EU 
trade marks and Community designs, or the future unitary patent once it is in force), notably 
as  regards  private  professional  advice,  the  main  source  of  expenses  for  those  titles.  On  the 
basis  of  the  applicable  IP-related  legislation,  Member  States  could  reinvest  part  of  the  fees 
received from European IP titles to support such a programme in the future. 

Under the COSME programme, between 2017 and 2019, the Commission services will pilot 
co-financing  of  patent  registration  costs  and  attorney  fees  for  innovative  SMEs  requesting 
patents at European level. 

2.  FACILITATING THE USE AND ENFORCEMENT OF IP 

Getting innovative start-ups and SMEs to benefit from the IP system, whether by registering 
rights  or  by  applying  other  IP  protection  methods,  is  not  enough.  Once  such  firms  own  IP 
rights, they face subsequent challenges on how to make good use of the IP system. With the 
appropriate tools, such as a commonly agreed valuation methods, start-ups and SMEs could 
generate more income through licensing or sales of their protected IP, as well as raise more 
funds for investment. Small businesses however will not receive the full value of their IP if 
they  cannot  enforce  them  when  needed.  Evidence  suggests  that  enforcing  IP  titles  is  costly 
and  complex,  especially  for  start-ups  and  SMEs  facing  large  entities.  In  this  context,  the 
Single Market Strategy announced that the Commission would pay specific attention to SMEs 

17 Approximately EUR 5 000 in pre-grant administration fees and potentially more than EUR 30 000 in renewal 
fees only for the first ten years for 27 EU Member States. 
18 When considering European and/or national patents, only 0.8 % of SMEs own patents in the EU versus 10.4 % 
of large firms (EUIPO, 2015). 
19  The  scheme  will  also  focus  on  SMEs  with  the  'seal  of  excellence'  and  will  be  funded  from  the  above-
mentioned  COSME  2017  budget.  A  subsequent  extension  of  this  scheme  could  take  a  broader  community  of 
innovative  SMEs  into  account;  to  address  a  common  failure  on  the  part  of  SMEs  that  have  participated  in 
research and innovation projects funded publically but not considered IP protection during the time eligible for 
funding from such sources. 
20 Attorney fees are estimated around EUR 5 000, the scheme could subsidise 40-50 % of such a sum. 

5 

 
 
 
                                                            
in  the  context  of  the  on-going  review  of  Directive  2004/48/EC  on  the  enforcement  of  IP 
rights. 

2.1. A PATENT LICENSING ON-LINE INFORMATION  TOOL TO PROMOTE IP SHARING AND 

AVOID UNNECESSARY LITIGATION 

SMEs need to pay attention not only to their own IP rights, but also to the IP rights of others. 
In  a  knowledge-based  environment,  even  IP-savvy  SMEs  need  help  to  find  commercial 
partners.  A  tool  with  patent  licensing  information  could  be  very  useful  to  facilitate  such 
partnerships and avoiding costly disputes.  

Existing  patent  databases  (which  simply  list  patents  and  owners)  do  not  effectively  reduce 
transaction costs, as they do not provide sufficient information on the technology as well as its 
commercial potential21. Also, in the case of European patents, the same patent may be listed 
in one country but not in another one (i.e. where such a database is not available). 

The Commission services will therefore work with the network of Member State authorities to 
develop  a  platform  for  knowledge-sharing  and  business  matchmaking  on  technologies 
covered  by  current  and  future  patents  in  2017-18.  This  platform  would  offer  organised  and 
comprehensible  information  (e.g.  know-how,  key  contractual  conditions,  and  partnering)  in 
order  to  facilitate  licensing  between  parties.  The  platform  would  serve  as  a  service  to  find 
information on the licensing possibility of patents in force in different Member States. While 
all entities would benefit from such a tool, it would particularly help SMEs and start-ups to 
license-in  and  license-out  technologies  across  Europe22.  Member  States'  authorities  could 
assist in the promotion of this tool to innovative SMEs within their IP support services, using 
a common portal and materials.  

2.2. MEDIATION AND ARBITRATION – AVOIDING EXPENSIVE LITIGATION 

Alternative, lighter and faster methods of solving legal disputes – namely through arbitration 
and mediation – can be very useful for SMEs as an alternative to litigation in court, if such 
arbitration and mediation can be provided at an affordable cost. These methods also allow for 
more  proportionate  settlements  than  simple  out  of  court  bi-lateral  agreements,  while  the 
involvement of an experienced IP specialist as an independent expert ensures a more equitable 
outcome.  However,  EU  SMEs  do  not  use  mediation  and  arbitration  as  frequently  as  other 
ways of settling disputes23. 

Neither at EU level nor in the majority of Member States (see Annex) can firms benefit from 
specialised  IP  mediation  and  arbitration  services.  The  recent  EU  trade  mark  reform  has 
empowered the EUIPO to offer mediation services on trade marks and design rights24. 

21 To further incentivise licensing agreements of technologies, some European countries (e.g. Spain, the UK and 
Germany)  have  established  a  'Licence  of  right'  (LoR)  system  where  owners  declare  that  they  are  prepared  to 
license patents on a non-exclusive basis in return for a renewal fees discount. The Registry of the unitary patent 
will have a similar LoR system. 
22 A 2012 Commission survey revealed that SMEs innovative at EU-level would welcome such an initiative. See 
Options for patent valorisation (European Commission, 2012). 
23  Mediation  is  the  third  procedure  to  fight  IP  infringements  used  by  SMEs  (18 %  of  them),  after  bilateral 
negotiations and court proceedings, while arbitration is the least used (10 % of EU SMEs). Intellectual property 
SME scoreboard (EUIPO, 2016). 
24 In addition, the future unitary patent system will also have a mediation and arbitration centre. 

6 

 
 
 
                                                            
The Commission services will strive for the availability of mediation and arbitration services 
covering the whole spectrum of IP, accessible across the entire EU and designed in an SME-
friendly way. They will be available online and potentially through local intermediaries (e.g. 
chambers  of  commerce)  and  will  dovetail  with  broader  legal  mediation.  More  accessible 
mediation and arbitration would also facilitate cross-border dispute settlement where multiple 
courts are competent (e.g. in the case of European patents). 

The Commission services: 
-  with  the  EUIPO,  will  map  existing  mediation  and  arbitration  services  in  the  EU  and 
internationally; and 
-  in  partnership  with  the  relevant  competent  bodies,  will  develop  an  EU  IP  mediation  and 
arbitration network fit for SMEs. 

Member State authorities could also engage in the creation and operation of this system and 
the promotion of it to SMEs. 

2.3. IP LITIGATION INSURANCE AND IP VALUATION 

The ability to enforce rights is essential for IP to keep its value, but SMEs do not necessarily 
have  the  financial  or  legal  means  to  do  so.  Litigation  insurance,  if  it  was  available  for  IP, 
would  allow  for  the  sharing  or  transfer  of  the  financial  burden  and  risks  associated  with  IP 
litigation. This would be of decisive help to innovative SMEs. Not only would it help them 
address the costs and potential financial risk of litigation, the added capability that it would 
provide  would  also  bring  additional  leverage  in  a  negotiation  related  to  an  IP  dispute.  This 
would  increase  the  likelihood  of  SMEs  obtaining  more  favourable  settlements.  Insurance 
would also facilitate drawing upon expert advice. 

However,  according  to  information  provided  by  Member  State  authorities  (see  Annex),  the 
market for insurance products for IP litigation has, to date, been too limited. The Commission 
services  will  seek  to  encourage  insurance  companies  to  enter  this  market  in  respect  of  EU-
wide IP titles, and it will assist innovative SMEs to access such services. To this end, a two-
year pilot project on multi-territory patents will be launched, after which the initiative will be 
evaluated and, if appropriate, continued and possibly extended to other IP titles. 

In conjunction, the Commission services will engage with stakeholders on the development of 
insurance  for  loss  of  IP25.  Aside  from  the  immediate  advantages  to  SMEs  that  greater 
protection of their assets would bring, a significant by-product of such an initiative would be 
the creation by the insurance industry of a generally-applied IP valuation methodology. 

Difficulties  in  establishing  the  value  of  IP,  which  is  highly  case-specific,  reduce  the 
possibility of using IP to access finance. While putting a value on an IP asset is not an easy 
task, totally neglecting it is obviously not an option either. The EU economy is  increasingly 
centred  on  services,  information  and  knowledge  with  the  effect  that  the  value  of  intangible 
assets owned by business – especially start-ups – is greater than tangible assets (such as real 
estate and machinery), the only form of assets that are measured. Therefore, bizarrely, while 
the  importance  of  information  and  knowledge  is  growing,  the  relative  measured-value  of 
company assets available as security is actually shrinking. With the help of a well-established 
and widely recognised valuation method, businesses holding IP would be better positioned to 

25 That is, insurance covering the damages suffered by malicious or accidental disclosure of a trade secret as well 
as by the revocation by a court of an IP right or declaration of its invalidity. 

7 

 
 
 
                                                            
gain  recognition  of  IP  assets,  and,  as  a  result,  would  find  it  easier  to  obtain  access  to 
competitively  priced  finance.  Once  commonly  recognised  across  the insurance  marketplace, 
IP-holding  SMEs  could  then  exploit  valuations  based  on  this  methodology  in  financial 
markets so as to lever finance. 

To  encourage  the  creation  of  a  European-level  IP  litigation  insurance  scheme,  the 
Commission services will: 
- in 2017, in partnership with the EUIPO, identify existing cross-border IP litigation insurance 
products; 
- in 2017-2018, consult SMEs, insurers and IP experts to identify best practice and obstacles 
to the emergence of a competitive and dynamic single market for such products; 
- in 2018, encourage the offer and uptake of IP litigation insurance, and set up a platform that 
will assemble and diffuse information on best practice in IP litigation insurance; and 
-  from  2018,  use  COSME  funding  to  co-finance  the  initial  take-up  of  patent  litigation 
insurance by innovative SMEs so as to kick-start this market. 

Starting  in  2017,  the  Commission  services  will  encourage  the  development  of  IP  valuation 
methods by: 
-  together  with  the  EUIPO,  identifying  methods  of  IP  valuation  most  commonly  used  for 
financial and insurance purposes; and 
-  working  with  Member  State  authorities  and  stakeholders  to  agree  on  a  common  valuation 
method  to  be  used  in  IP  loss  insurance  and  IP  backed  financial  services,  as  well  as  for  IP 
valuation under the newly adopted anti-tax avoidance package Directive26. 

3.  COORDINATION OF IP SUPPORT AND MONITORING OF IMPACT 

3.1. ACTIONS TO COORDINATE IP SUPPORT FUNDING SCHEMES FOR INNOVATIVE SMES 

An  EU  system  of  IP  support  for  start-ups  and  SMEs  has  to  work  together  and  complement 
business and innovation support both at EU (e.g. through the Enterprise Europe Network) and 
national  level27.  It  also  needs  to  be  consistent  with  the  IP  support  measures  provided  by 
Member  State  authorities.  EU  IP  schemes  should  complement  and  develop  with  national 
offerings. This requires coordination and sharing of best practice. 
While  national  IP  support  is  funded  by  national  budgets28,  Member  States  can  use  two 
additional sources: the European Structural and Investment Funds (ESIF) and fees generated 
from EU level IP rights. Given the priorities of ESIF, these naturally dovetail with innovation 
and  competitiveness  supports.  In  addition,  the  Regulation  on  trade  marks29  allocates  to 
Member  States  a  share  of  the  fees  paid  by  the  IP  users30.  Such  income  could  potentially 
become a major source of additional funding for Member States to support IP use by SMEs. 

26 Council Directive (EU) 2016/1164 of 12.7.2016 laying down rules against tax avoidance practices that directly 
affect the functioning of the internal market. 
27 For example, via regional development agencies, chambers of commerce and trade associations. 
28 State aid for supporting SME innovation is in principle compatible with EU competition law (see Article 28 of 
Commission Regulation 651/2014). 
29  Article  123c  of  Regulation  (EU)  No  2424/2015  foresees  funding  of  helpdesks,  information  centres  and 
awareness raising activities. 
30 A similar mechanism is provided for in recitals 21 and 22 of Regulation (EU) No 1257/2012, where  – once 
this Regulation enters into force – funding for patent-related activities is foreseen, with an important role for IP 
offices in Member States to provide advice and support for SMEs. 

8 

 
 
 
                                                            
Horizon 2020 requires beneficiaries to protect and exploit the results of projects and the rules 
of this Framework Programme provide for the eligibility of IP protection costs31. Likewise, in 
a number of Member States, IP protection costs are deemed as eligible costs in research and 
innovation projects. Member State authorities could consider as eligible a broad range of IP 
protection  costs.  In  a  similar  vein,  Member  State  authorities  could  agree  on  a  common 
minimum  obligation  to  adequately  protect  IP  and  publish  the  ensuing  economic  results  of 
state-funded projects. 

The Commission services: 

- in partnership with the EUIPO, will provide mechanisms for the exchange of knowledge on 
IP support services and will furnish more detailed information on how to use different sources 
of financing to develop IP support services; 
- in 2017, with the support of the EUIPO, will set up an EU coordination platform bringing 
together national IP support coordinators;  
- in cooperation with the EUIPO and Member State authorities, will streamline European IP 
support for SMEs and exchange of best practice in this platform; and 
-  possibly  by  means  of  guidance  to  Member  State  authorities,  will  seek  to  improve 
coordination  of  IP  support  funding  through  research  and  innovation  (as  well  as  SME 
competitiveness)  schemes,  and  to  use  IP  rights  fees  distributed  to  Member  States  under  the 
applicable EU IP legal instruments. 

Member State authorities could improve IP support measures and link them with business and 
innovation support schemes by: 
- setting up identifiable national IP support coordinators; and 
-  upgrading  IP  support  measures  based  on  the  guidelines,  best  practice  and  results  of 
monitoring to achieve the best economic impact on SMEs. 

3.2. MONITORING SYSTEM FOR IP SUPPORT AND FOR SMES USE OF EU IP RIGHTS 

The use of EU IP rights by SMEs is not currently monitored on a systematic basis. Similarly, 
the  evaluation  of  existing  IP  support  measures  is  undertaken  solely  at  national  level.  In 
addition, there is no common methodology to assess the economic impact of such measures.  

With the EUIPO, the Commission services will set up a system to monitor the use of IP rights 
by SMEs and monitor and measure the impact of EU IP support activities. This system will 
include structured engagement with SMEs. 

For  their  part,  Member  State  authorities  could  monitor  and  measure  the  impact  of  national-
level IP support, based on a common methodology. 

CONCLUSION 

This  IP  support  package  for  start-ups  and  SMEs  will  be  put  in  place  with  Member  State 
authorities,  the  EUIPO  and  other  relevant  European  IP  stakeholders.  On  the  basis  of  data 
collected  by  the  EUIPO,  the  Commission  services  will  prepare  an  implementation  report  in 
2019 that will assess the impact of the package on innovative SMEs. 

31  It  also  provides  some  IP  coaching  to  beneficiaries  of  the  SME  instrument  and  European  Research  Council 
grants. 

9 

 
 
 
 
 
                                                            
Annex 

Report on existing national initiatives seeking to improve IP civil enforcement 
procedures for SMEs 

In  July  2014,  the  Commission  adopted  a  Communication  entitled  Towards  a  renewed 
consensus on the enforcement of Intellectual Property Rights: An EU Action Plan32. This 
Action Plan reaffirmed the importance of intellectual property (IP) as a key driver for growth 
and  innovation  for  the  industrial  competitiveness.  The  objectives  of  the  Action  Plan  were 
subsequently reflected in the October 2015 Single Market Strategy33. 

One  of  the  actions  foreseen  in  the  Action  Plan  was  a  report  on  existing  national  initiatives 
seeking  to  improve  IP  civil  enforcement  procedures  for  SMEs.  This  report  compiles  the 
information received from Member States within the framework of the Group of Experts on 
the  Enforcement  of  Intellectual  Property  Rights34.  The  present  report  is  the  result  of  a  two 
stage  consultation  with  the  members  of  this  expert  group.  The  first  stage  took  place  on  the 
basis of a questionnaire discussed with the group on 22 June 2015. The preliminary results of 
the  consultation  were  presented  in  the  meeting  of  the  group  of  13  November  2015.  It  was 
agreed at that point to circulate the questionnaire again for a second round of replies, allowing 
the  members  of  the  group  to  develop  further  their  responses,  taking  into  account  the 
provisional summary of responses. 

1. 

INTRODUCTION 

There is a wide diversity of forms in which SMEs can be encouraged to and helped in the use 
of  IP.  Raising  awareness  and  providing  information  is  one  of  them.  General  IP  information 
and  training  services  are  widely  available,  either  through  dedicated  websites,  publications, 
helpdesks, information points, e-learning tools, awareness campaigns, or through workshops, 
lectures  and  seminars.  All  these  actions  and  schemes  would  benefit  from  detailed  mapping 
and joint coordination effort to optimise outreach, impact, avoid duplication, and add a cross-
border  focus.  Many  Member  States  also  make  available  databases  and  e-filing  tools,  which 
facilitate  access  to  and  management  of  IP  titles.  In  contrast,  bespoke  IP  advice  services  are 
more limited. This report focuses on individualised support services such as counselling and 
funding, as well as on procedures and mechanisms that facilitate IPR enforcement by SMEs. 

2. 

INDIVIDUALISED SUPPORT SERVICES FOR THE ACQUISITION AND USE OF IP RIGHTS 

2.1.  Financial aid to use of IP 

2.1.1.  Funding  

Several Member States have funds in place that can be leveraged for the acquisition, use and 
exploitation of IP titles. This funding can consist of subsidising applications, registration and 
renewal  fees,  tax  deductions  for  IP  related  to  the  afore-mentioned  costs.  There  are  also 
national schemes subsidising use of IP export services. 

Austria has developed funding programmes assisting SMEs in acquiring IP titles outside of 
Europe  (50 %  subsidies  with  'IP.Finanzierung',  with  a  ceiling  of  EUR 18  000)  and 

32 COM(2014) 392 of 1.7.2014. 
33 COM(2015) 550 of 28.10.2015. 
34 Created by Commission Decision C(2014) 6449 of 16.9.2014. 

10 

 
 
 
                                                            
to  commercialise 
programmes  helping  SMEs 
'IP.Vermarktung' and in-licensing with 'License.IP'). 

their 

IP 

rights 

(out-licensing  with 

In  Bulgaria, 
'Competitiveness' includes patent application fees as eligible costs.  

innovative  SMEs  under 

funding  of 

the  Operational  Programme 

In Finland, Tekes (the Finnish Funding Agency for Innovation) is preparing a  new funding 
instrument  aimed  at  SMEs  (innovation  funding  of  SMEs),  which  includes  a  section  on 
funding of intellectual property related matters (e.g. application and enforcement of an IPR). 

In  Germany,  the  Federal  Ministry  of  Economic  Affairs  and  Energy  runs  the  WIPANO 
programme which assists SMEs in registering their first patent. The assistance covers relevant 
costs in relation to the filing and commercialisation of a patent up to EUR 16 575. 

Italy has funding schemes (Brevetti +, Marchi +, Disegni +) aimed at encouraging SMEs to 
register IPRs and benefit from their economic exploitation. In addition, a National Innovation 
Fund  (Fondo  Nazionale  Innovazione)  has  been  created  in  order  to  fund  innovative  SME 
projects stemming from IPR exploitation through venture capital tools. 

Latvia is developing a new State Support Programme. This consists of innovation vouchers 
for micro, small and medium sized enterprises supporting the purchase of external expertise 
that  is  necessary  to  develop  new  or  significantly  improved  products  or  technologies,  to 
prepare and submit applications to register industrial property rights, or for the certification of 
a  new  products  or  technologies.  The  support  will  cover  up  to  60 %  of  costs,  with  a  cap  of 
EUR 25 000 for each company. 

In  Sweden,  there  is  financial  support  in  the  form  of  an  'IP-check',  as  an  incentive  for 
companies  to  have  IP  strategies.  The  programme  grants  a  maximum  of  SEK  100  000  for 
contracting  IP-professionals.  The  aim  is  to  help  companies  make  an  inventory  of  their  IP 
assets and put in place an IP strategy. 

2.1.2.  Fees reduction 

In  France,  the  Intellectual  Property  Office  (INPI)  grants  a  50 %  reduction  on  patent 
registration fees and maintenance fees in order to encourage innovation within SMEs. 

Both Germany and Slovakia provide for a 50 % reduction on renewal fees in cases where the 
patent holder issues a binding declaration concerning willingness to license the patent. 

Slovakia  also  has  a  50 %  fee  reduction  on  application  fees  applicable  in  case  the  patent  or 
utility  model  is  applied  for  by  the  inventor/author.  This  fee  reduction  is  often  claimed  by 
SMEs and the self-employed. 

2.1.3.  Tax measures 

Italy has a tax regime granting businesses an exemption from corporate income tax and local 
income  tax  related  to  the  licensing  and  the  direct  exploitation  of  qualifying  IPRs  -  patents, 
trademarks, designs, business and technical-industrial know-how. 

In Spain, through the 'Patent Box scheme', the exploitation and licensing of patents, designs 
and  trade  secrets  benefits  from  a  tax  reduction35.  In  addition,  deferral  of  any  patent  fees 
payment is available for any person with an annual income below a given threshold. 

35 See Ley de Emprendedores and Article 23 of Impuesto sobre Sociedades (Ley 27/2014). 

11 

 
 
 
                                                            
2.2.  Access to finance 

The  UK offers an IP  Finance toolkit aiming  at facilitating dialogue between  businesses and 
financial  services  professionals.  It  includes  templates  and  guidance  to  help  businesses 
accurately identify and describe their IP assets in a way that prepares them to fill in finance 
applications. The toolkit also supports decision-making by a potential lender. 

2.3.  Personalised support services 

Personalised support services assist individual SMEs in their specific needs. Support services 
may range from providing answers to questions on registration procedures and best available 
IP  options,  to  auditing  the  intangible  assets  of  a  business  with  view  to  developing  and 
following-up on an IP strategy. 

The present report focuses on services that go beyond general helpdesks/information centres, 
and looks rather at be-spoke support services that imply direct engagement with the user and 
his  or  her  business  project:  e.g.  services  involving  a  written  report  with  recommendations 
based  on  preparatory  work  that  may  include  face-to-face  meetings,  analysis  of  the  relevant 
business model and documentation of valuable intangible assets and innovative solutions for 
possible IPR protection and exploitation. 

In Austria, within the framework of the joint initiative 'discover.IP' the Austrian Patent Office 
and  Austria  Wirtschaftsservice  (aws)  analyse  SME  strategies  for  handling  intellectual 
property,  suggesting  concrete  steps  for  optimisation  and  tailor-made  recommendations  for 
action. 

Croatia's  IPO  (SIPO)  has  a  pre-diagnosis  procedure  for  SMEs  provided  by  SIPO  experts. 
Slovakia  also  provides  IPRs  Pre-diagnostics  and  Latvia  offers  free  of  charge  consultations 
with patent attorneys for SMEs. Consultations in Latvia are organised once a month, with a 
time  allowance  of  around  20  minutes  per  enterprise.  The  Austrian  Patent  Office  provides 
information  and  consultation  services  regarding  the  protection  of  IP  and  utilisation  of 
registered  rights.  Through  the  programme  'Discover  IP',  the  Patent  Office  further  consults 
SMEs. 

The  French  Intellectual  Property  Office  (INPI)  offers  a  series  of  services  called  'Coaching 
INPI',  which  allows  start-ups  and  SMEs  to  obtain  and  develop  an  IP  strategy  that  is  fit  for 
their needs and their environment. These services include: 

 

 

 

'Booster  PI',  a  pre-diagnostic  financed  by  the  INPI  which  evaluates  the  IP  needs  of 
SMEs and provides recommendations not only on IP protection but also on licensing, 
valorisation, etc.; 
'Pass PI', financial support the implementation of the recommendations coming out of 
the above-mentioned pre-diagnostic; and 
'Master Class PI', training for SME managers allowing them to develop an IP strategy 
for their businesses. 

The Estonian Patent Office offers free-of-charge consultations to SMEs and to individuals on 
how to acquire legal protection for industrial property. In 2014, the Patent Office assisted 207 
SMEs and individuals in respect of inventions, 128 SMEs and individuals on trade marks and 
37 SMEs and individuals on designs. 

12 

 
 
 
The  Irish  Patents  Office  offers  a  free  'IP  clinic'  service,  which  gives  an  opportunity  to 
members  of  the  public,  inventors,  entrepreneurs  and  business  people  to  discuss  with  the 
Patents Office their ideas in relation to matters concerning IPR applications. 

In Spain, the Cevipyme is an SME support centre specialised in IP, providing, among other 
things, free personalised advice services on the acquisition, exploitation and management of 
IP.  Spain  provides  an  IP  Audits  programme  for  high  growth  SMEs  –  which  includes  an  in 
depth analysis of a business’s IP, including opportunities for increasing revenue as well as any 
potential risks, together with recommendations for maximising the value of a firm's IP. 

The UK IPO funds an 'IP Audits' programme for high growth SMEs. This specialised service 
is  administered  by  the  IPO  and  carried  out  by  an  IP  professional;  it  provides  an  in-depth 
analysis  of  a  business's  IP,  including  opportunities  for  increasing  revenue  as  well  as  any 
potential risks, together with recommendations for maximising the value of that business's IP. 

3.  PROCEDURES AND MECHANISMS FACILITATING IPR ENFORCEMENT BY SMES 

In  terms  of  legal  proceedings  put  in  place  for  the  enforcement  of  IP  rights,  many  Member 
States  have  general  schemes  for  legal  aid,  small  claims  procedures  and  legal  caps  on 
recoverable lawyers' fees. In general, these instruments are not designed specifically either for 
IP litigation or for SME use. 

The existence of specialised IP courts and the availability of Alternative Dispute Resolution 
(ADR)  schemes  may  also  facilitate  enforcement  for  SMEs,  as  they  allow  for  streamlined 
procedures  and  speedy  judgments.  Operating  through  specialised  courts  and  ADRs  offers 
improved predictability as regards judgments and therefore increases legal certainty. This in 
turn reduces unnecessary litigation. 

Many Member States have Boards of Appeal, which are a form of IP specialised service in the 
sense that they are generally set up to hear appeals against decisions of IPOs. 

IP litigation insurance can also play a relevant role in supporting SMEs, reducing the financial 
risk of litigation, strengthening negotiation capabilities, and it may include some form of legal 
advice.  There  is  however  little  information  available  on  the  availability  and  uptake  of  such 
products. 

3.1.  Specialisation of Courts 

Certain Member States present some degree of IPR specialisation in IPR dispute handling. 

This is the case in Finland, France, Germany, Italy, Portugal and the UK, which have IP 
specialised  courts.  Slovakia  and  Sweden  have  also  very  recently  established  IP  specialised 
courts. In Slovakia, as of 1 July 2016, there is one sole district court dealing with industrial 
property  rights  disputes,  while  there  are  three  courts  dealing  with  copyright  and  unfair 
competition cases. In Sweden, as from 1 September 2016, IP cases are adjudicated by the new 
Patent  and Market  Court  in  Stockholm,  at  first  instance,  and  by  the  new  Patent  and  Market 
Appeal Court at second instance. 

In  other  Member  States, 
takes  place  before  courts  dealing  with 
commercial/business  affairs  (Austria  and  Croatia),  so  providing  a  certain  degree  of 
specialisation. 

litigation 

IP 

13 

 
 
 
3.2.  Simplified enforcement procedures 

In  the  UK,  the  Intellectual  Property  Enterprise  Court,  which  hears  IP  claims,  has  a  Small 
Claims Track for cases where the amount in dispute, not including costs, is GBP 10 000 or 
less (approximately EUR 12 275). 

3.3.  Alternative  Dispute  Resolution  (ADR)  mechanisms  -  Arbitration  and 

Mediation 

Mediation  and  Arbitration  services  are  widely  available,  but  as  a  rule  they  are  neither 
specialised in IP nor focused on SMEs. 

The  German  Institution  for  Arbitration  (Deutsche  Institution  für  Schiedsgerichtsbarkeit  – 
DIS) has a special arbitration procedure specifically for SMEs, which can be used in IP cases. 
The arbitration procedure is expedited and costs are reduced. 

France  provides  a  governmental  mediation  service  for  businesses  facing  contractual  issues 
with  providers  or  clients.  In  cooperation  with  the  INPI,  the  scope  of  the  service  has  been 
extended to IP matters (an agreement with the INPI to this end was signed in 2015). 

Portugal, Spain and the UK offer IP specialised ADR: 

  Portugal  has  a  state  supported  arbitration  and  mediation  centre  for  IP  disputes 
(Arbitrare)  providing  a  simple,  bilingual  (Portuguese  and  English)  fast  and 
inexpensive ways to resolve conflicts. The proceedings are carried out online. 
In  Spain,  the  First  Section  of  the  Intellectual  Property  Commission  provides 
mediation and arbitration services. 

 

  The  UK  IPO  offers  an  IP  mediation  service,  and  maintains  a  list  of  accredited 
mediators who have indicated that they are able to mediate in IP disputes. In addition, 
the  IPO  offers  an  Opinion  Service  providing  impartial  and  authoritative  opinions  on 
questions  of  infringement  and  validity  of  patents.  Although  these  opinions  are  non-
binding, they can help parties to resolve disputes without the need for costly litigation. 
An opinion is prepared by an IPO senior examiner and costs the requester GBP 200. 
Opinions are based on papers submitted by the parties. 

Many Member States have ADRs in the field of copyright, in particular for disputes involving 
collective  management  organisations  or  disputes  on  remuneration 
tariffs  for  cable 
retransmission.  This  is  the  case  of  the  Czech  Republic,  Denmark,  Estonia,  Germany, 
Poland, Portugal, Slovenia, and Sweden. 

Slovakia plans to put in place an ADR mechanism for top-level domain (.sk) disputes. 

3.4.  State  sponsored  insurance  schemes  for  legal  expenses  incurred  in  solving  IP 

disputes 

State sponsored insurance schemes are practically inexistent. An exception is the UK, where 
there is an increasingly active market providing Before the Event (BTE) IP Legal Expenses 
Insurance (LEI) policies. BTE LEI policies can cover the insured entity against its own legal 
costs  and/or  the  legal  costs  of  someone  the  entity  is  in  dispute  with.  The  UK  programme 
‘Cyber Essentials’ provides innovation vouchers which may be used to, among other things, 
to purchase insurance, and the UK is proactively encouraging the use and offer of such types 
of insurance products. The Danish Patent Office has also been facilitating the emergence of 
patent insurance products. 

14 

 
 
 
Some Member States have no information on the market availability of such products, and in 
others  it  seems  that  such  products  do  not  exist  at  all.  Although  IPR  insurance  products  are 
available in certain Member States, there is a general lack of data on the extent to which these 
products are effectively used and the specific terms and conditions of coverage. 

In France, past initiatives to support availability and access to insurance products on IP did 
not take off due to lack of demand. In France, access to justice is free of charge. Some other 
Member States have mentioned that the lower value of the Court fees. 

3.5.  Other measures to support IPR enforcement 

Austria's  Wirtschaftsservice  Gesmb  (aws),  the  country's  principal  business-focused  funding 
agency, has an  IP  enforcement support programme that  assists businesses  in  enforcing their 
intellectual property rights in Austria and abroad. It focuses on SMEs who develop their own 
technological expertise. The service includes consulting services, the awarding of government 
grants and assistance with court procedures (50 % of litigation costs can be covered, but also 
other costs that occur during the procedure of enforcement). In cases where there is evidence 
of  infringement,  aws  develops  an  enforcement  and  litigation  plan,  detailing  the  form  and 
scope  of  aws's  involvement.  Within  the  scope  of  its  activities,  aws  offers  support  by 
consulting its local networks and alliances and organising networking events between SMEs, 
large-scale  enterprises  and  litigators,  in  order  to  enable  them  to  exchange  knowledge  and 
share  best  practise  solutions.  Aws  also  offers  training  and  support  through  IP  awareness 
courses organised with other governmental bodies such as the Austrian Patent Office. 

15