Prepared by Paola Furiosi, Federica Pezza, Giuseppe Massimo Verrecchia and Caterina Maggia
Following the success of the previous editions, also this year for the third time in a row the European Union Intellectual Property Office (“EUIPO”) decided to launch the financial support project designed to support the protection of intellectual property rights of small and medium-sized enterprises (“SMEs”) in the European Union (the “SME Fund” or the “Fund”).
In other words, the SME Fund is a reimbursement programme which issues vouchers that can be used to partly cover the fees for the selected activities. In particular, the present edition of the Fund is made up of two different phases: the first phase focuses on trademarks and designs and was launched on 23 January 2023, while the second – dedicated to patents and plant variety rights – is yet to be announced.
Who is eligible for the Fund
The first phase provides for the allocation of certain benefits (split in two categories: Voucher 1 and Voucher 2) to those enterprises meeting specific requirements.
In particular, according to the guidelines given by the EUIPO, the following criteria should be met:
- Applicants must qualify as SMEs, as defined on the EU recommendation 2003/361 (Click here to read the recommendation).
- Applicants must be established in the territory of the European Union.
- Applicants must provide each of the following documents:
- A VAT certificate identifying the company, issued by the competent national authority.
- A company bank statement including the company name, its IBAN and BIC/SWIFT code; and
- (if the SME is using the services of an external representative) a declaration of of honor signed by an authorized owner or employee of the SME.
The Vouchers
Applicants meeting the requirements specified above can have access to the following Vouchers:
- Voucher 1: consisting in a 90% reimbursement for the pre-diagnostic services of SMEs’ intellectual property assets for the definition of an adequate IP strategy (“IP Scan”) up to a maximum amount of EUR 1350. However, since the Italian Patent and Trademark Office has not joined this initiative yet, as things now stand SMEs based in Italy cannot have access to this type of voucher;
- Voucher 2: consisting in a 75% refund of the fees for the registration of new national, regional and/or EU trademarks, designs or models, for the registration of any additional class, for the examination, registration, publication and deferment of the publication (or a 50% reimbursement for the case of non-EU filings), for a maximum amount of EUR 1000.
The Application process – How we can help
As a preliminary remark it should be noted that Vouchers 1 and 2, the EUIPO allocated a total budget of EUR 25 million, applying the “first come, first served” principle. Thus, once the budget runs out, no additional applications will be allowed.
Coming to the merits, applications can be submitted either by the owner of the SME (or one of its employees) or by an authorized external representative acting on its behalf. Within 15 days, a communication is then issued by the Office either informing that the Voucher has been granted/refused or that additional clarifications are needed.
Once the Voucher has been granted, the successful SMEs will have two months’ time (the so called “activation period” – extendable by two months) to activate their voucher, by filing their trademark or design applications and asking for the reimbursement.
Our team of experts is available to provide support during the application process for Voucher 2, including for the collection of the necessary documentation and the reply to any request for clarification issued by the Office. In addition to this, and although as of now Voucher 1 (“IP Scan”) is not available in Italy, our team has all the necessary expertise to assist its clients setting up the most suitable strategy to adequately protect their rights, starting from the very first phase of the preliminary searches up to the subsequent filing, monitoring and enforcing activity.
Let’s Talk
For more information
Contact Andrea Lensi Orlandi – Partner, PwC TLS Avvocati e Commercialisti
Contact Paola Furiosi – Director, PwC TLS Avvocati e Commercialisti