IP Enforcement for SME’s – a list of useful resources

IP is fabulous and important part of your business: part of its use is that it will allow you to prevent third parties from copying you/using similar names. etc. The issue for many SME's, however, is that the cost of enforcement (either bringing action or defending a claim) is so high that it becomes pointless. Changes in the UK court structure have helped SME’s to be able to afford to take (or defend) actions, but still I often hear clients or would-be clients complain of the cost of legal action, or find that they have to either hold off taking action or concede because of the potential costs.

With that in mind here are a few thoughts for SME's as to how to deal with things in the UK.

IP pro bono

For businesses and individuals that fulfil the requirements, IP Pro Bono is a great resource. It was set up by a number of firms in collaboration with the IP Enterprise Court and the relevant legal associations to try to solve the issue of SME’s not being able to afford advice or legal assistance.

Businesses and individuals apply for assistance and there are professional firms and barristers/advocates who help them at no cost. Sometimes the help will be limited to just some steps (for example advice, or a first letter of complaint/in reply), whilst other times it might cover the entire dispute. The website can be found here : http://www.ipprobono.org.uk. I have supported IP Pro Bono over the years alongside my traditional work as a way of supporting the broader community.

Funding providers

There are a number of litigation funders on the market dealing with IP disputes who can offer funds to bring an action for infringement against a third party (ie. to fund a law firm to help you). The downside is that if successful they will take a chunk of the damages (possibly all of it) but if the most important part is getting the third party off the market then it may be of interest. One example of these firms is Augusta Ventures - https://www.augustaventures.com – but there are an increasing number of companies out there dealing with cases with an ever decreasing potential pot of damages.

It is also possible that a firm of lawyers may agree to conduct a case on a reduced fee basis. Sometimes that comes with an agreement that they will get a proportion of any damages obtained - but not always dependent on that. Law firms are businesses, so you may be able to negotiate!

Small claims court/ D-I-Y.

Not the ideal for most people, but it is an option. If the damages involved are less than £10,000 and you are not claiming for infringement of registered designs, patents or plant varieties then the small claims track may be the way forward. The beauty of the small claims track is that there is limited exposure to costs if you lose - this reduces the risks of bringing a claim. For example in the IP Enterprise Court a losing party may have to pay up to £50,000 in relation to the winning side's legal costs (as well as damages): in the small claims track the legal costs are limited to £260 (some other costs may be awarded but these are not significant). In addition, the small claims track is used to parties bringing cases without legal representation, so are very helpful.

If you are bringing an action without professional help there are a lot of pitfalls, but it is not impossible and it may be that you could get some assistance (perhaps via IP Pro Bono) to start the case and can do the rest without a lawyer. To get started you can read the Court Guide to the Small Claims Track here: www.assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/679030/ipec-sct-published-guide-february-2018.pdf

Mediation/ other "alternative dispute resolution"

One option may be to suggest mediation or another resolution procedure that does not involve the Courts. There are of course some businesses who will not stop until a Court tells them to, but for many responsible companies a process which excludes the Courts may appeal.

The UK Intellectual Property Office offer a very cost-effective mediation service see more here: www.gov.uk/guidance/intellectual-property-mediation