EUIPO's new pro bono programme was presented during the virtual meeting of FICPI and the EUIPO on 10 December 2020.
This “Free personalised Intellectual Property support” is part of the “ideas-powered-for-business” programme funded by a 20 million Euro EU grant scheme which was created to help European SMEs access their intellectual property rights. Within this programme, EU SMEs can apply for vouchers for a 50% reduction on trade mark and design application fees, for a 75% reduction on an IP pre-diagnostic service (called “IP scan”) available at a number of EU national and regional Patent Offices, and for “Free personalised Intellectual Property support”.
SMEs based in the EU with less than 250 employees and an annual turnover of less than 50 Mio EUR can apply for this pro bono work. The work is not limited to a specific field of IP but covers virtually all IP aspects and services, including help in filing patents, trade marks, design applications, copyright, plant varieties, geographical indications, trade secrets and domain names, as well as licensing, enforcement, franchising, tech transfer of IP rights or any “other IP matters and disputes”.
The EU SME requests this work by completing an online pro bono application form; EUIPO then emails a “list of pro bono providers that meet the criteria” submitted in the SME pro bono request. For this service, the EUIPO has created a list of pro bono providers which lists the providers of such IP services that will offer all possible IP-related services for free.
After the pro bono work has been delivered, the EUIPO plans to request feedback from the SME on the service delivered (“not [on] the outcome of the service”).
Pro bono programmes can have their merits in providing appropriate access to the judicial and IP system for those who cannot afford this access. However, because such pro bono clients have – due to their exposed personal financial situation – a critical dependency on appropriate consultation, national pro bono systems usually protect these pro bono clients with strict professional obligations and observation of the (patent) attorney delivering such work to such pro bono clients.
Professional observation is usually performed by the national professional chambers/institutes as well as by the national patent offices.
In contrast, according to the present EUIPO pro bono programme, it appears that EUIPO does not cross-check (e.g. with national professional chambers/institutes) whether the pro bono work offerer has the competence/entitlement to offer such services under national law (as indicated in the EUIPO pro bono work application form).
Although EUIPO accepts no liability for having offered this pro bono work[1] and interprets this pro bono offer programme not as an “advertisement for legal services”, this might be assessed differently under EU national laws.
Since inappropriate legal advice in IP matters can create significant damages, EUIPO may run into liability issues once such damages arise under this pro bono programme, if EUIPO has not taken appropriate and reasonable steps to prevent the pro bono clients from such inappropriate advice, for example by safeguarding that all pro bono work offerers have adequate professional skills to perform the work requested. We addressed this potential liability issue during our virtual FICPI/EUIPO meeting and strongly suggested that the EUIPO at least regularly enquires with the national representative body of the pro bono work offerer to be included in the “pro bono collaborator list” as to whether this offerer is in fact entitled to give the advice requested (also under consideration of national law requirements of the pro bono request).
Whereas any offerer in the "pro bono collaborator list" can be held liable under professional requirements if she/he is a member of national professional bodies (chamber, institute, etc.) also with respect to disciplinary measures (and most of these national professional bodies also require proof of adequate professional liability insurances), offerers who are not members of such professional bodies are not subject to such professional/disciplinary control (and are usually not subject to adequate professional liability insurance schemes) but represent – on the other hand – an unacceptable risk of creating damages for the pro bono work requester and – indirectly – to the EUIPO.
FICPI will closely observe this practice specifically with respect to the legal subject matter offered/delivered in the course of this programme and assist the EUIPO to prevent any liability issues arising from damages created by inappropriate legal advice in the course of this programme.
One option would be for EUIPO to enquire regularly with the responsible national representative body of IP advisors (chamber/institute) before a pro bono work offerer is to be included in the “pro bono collaborator list” of the EUIPO whether this offerer is in fact entitled to give the advice requested (also under consideration of national law requirements of the pro bono request) and confirm that this entitlement is still present.
FICPI’s view and involvement
FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI's regular meetings with IP Offices and associations allows it to bring insights from its independent IP attorney members with a worldwide perspective and a shared commitment to high quality work.
Next steps
- Find out about FICPI's work with other IP Offices and organisations at FICPI News.
- Find out more and consider getting involved in FICPI's committees on issues from professional excellence to patents and designs.
[1] The pro bono work offerer has to tick a box with the following text: “I confirm that the information given in this form is true, accurate and complete to the best of my knowledge and that it is supplied in good faith. I am solely responsible for any error, omission or false statement and for the information submitted in this form and I undertake that the EUIPO can in no way be regarded as responsible for this. Should there be any change in the information provided, I am responsible for informing the EUIPO promptly. I understand and accept that the EUIPO cannot be held liable for any loss or damage caused by the pro bono provider. Similarly, I undertake that the EUIPO cannot be held liable for any damage caused by the service provider to third parties, during or as a consequence of performance of the pro bono service. I am aware that I may be subject to exclusion from the IP pro bono initiative if any of the declarations or information provided as a condition for participating in this procedure proves to be false or incorrect.
I acknowledge that inclusion in the IP pro bono providers list does not imply any EUIPO quality recognition or certification
The information contained in this website should not be considered advertising for legal services under the laws and rules of professional conduct of any of the EU/EEA Member States.“ (emphasis added)