N. 42, April - June 2009 
Editorial 

SMEs and IPR Enforcement
Ann-Charlotte Söderlund
Partner of the Delphi Law Firm
Chairman of the Swedish Anti-Counterfeiting Group
 
During 2008-2009, I had the opportunity to participate in the EU Commissions project “Best Practice for Enforcement of IPR for SMEs”1. The aim of the IPR Enforcement project was to find ways for SMEs to enforce their intellectual property rights by improving the support available to them. Even though we now have appropriate IP legislation in force, not much has been done to help the SMEs - which nowadays are facing much greater threats from infringers – to actually use those measures to enforce their rights.

The project has resulted in clear and detailed advice, with a view to helping policy makers and existing support providers to see what SMEs need in this area and how these needs can best be met.

The findings of the Expert Group can be summarised by the following messages:

No. 1: Do it Better – Bring it Together! It is necessary to establish IPR Co-ordination Offices both at the European level and at the national level to promote, co-ordinate and monitor IPR enforcement, work with the courts, police and customs authorities and ensure an efficient exchange of information between the different agencies and of experience between countries.

No. 2: Understand the Needs of SMEs. The IPR problems of SMEs are overlooked or underestimated by the police and customs authorities and by the courts and legal profession. SMEs can work more effectively with these agencies (one of the roles of the Co-ordination Offices), but the staff of the agencies should also be trained to take SMEs’ problems more seriously.

No. 3: Help SMEs Prepare. Effective enforcement of IPRs rests on proper IP management. You can’t enforce rights that are not clearly documented and, where appropriate, registered. The principles of intellectual asset management have to be built into support programmes and training – both for enterprises and for those responsible for policy development and implementation.

No. 4: Make Enforcement a Part of the Bigger Innovation Picture. It’s no use encouraging enterprise and innovation if the benefits cannot be secured. IP management and provision for enforcement have to be seen as part of the innovation cycle and supported and funded as such, through EU and national R&D programmes and innovation support.

No. 5: Do It Properly. A common intellectual property service has to be developed everywhere, rather than the differing services for each type of IPR that are still the norm in most countries. There is a need for better co-ordination between specialist IP advisers and generalist SME support agencies. All should be driven by the principles of good enterprise support management.

No. 6: Bring It Home to Consumers. A continuing effort is needed to bring home to consumers the implications of their use of counterfeit or pirated goods. Greater awareness of the potential damage and dangers could eliminate the need for much enforcement.

No. 7: Learn From What is Out There. There are lots of examples of good practice, from schemes that deal with hot spots of potential counterfeiting and piracy, such as trade fairs, to anti-counterfeiting desks at embassies and consulates in problematic countries outside Europe. Let all concerned parties know about this – not the least the IPR advisors!

No. 8: Help SMEs Meet in the Middle. A greater availability of mediation services in suitable cases would help SMEs, for example by enabling them to avoid formal court proceedings. Is it perhaps time to implement commercial courts in each EU member state?

No. 9: Solve the Problem of Paying for It. Enforcement is expensive! Help the right holders, not with hand-outs, but via the promotion of insurance schemes. In this vein, encourage anti-counterfeiting and anti-piracy organisations to broaden the base of their membership and activities.

Now we start with the real work of realising at least a few of the above message, and one way to start is via the IPeuropAware2 project!





1. The results of this project can be found in the Report “Making IPR work for SMEs”, available at http://ec.europa.eu/enterprise/enterprise_policy/industry/ipr_report.htm («)


2. In addition to the Report ”Making IPR work for SMEs, in the INNOACCESS Web site you can find the document entitled “Enforcement Best Practices”. Available at http://www.innovaccess.eu/enforcement_best_practices.html («)