The Spanish Courts had decided that the Spanish Patent and Trade Mark Office (SPTMO) cannot provide services of advice to the users

EUIPO has set up the so called “IP Scan” service with the aim of helping SMEs to decide what intangible assets to protect and to understand how IP can help their businesses grow. It was intended to offer guidance rather than legal advice. However, IP Scan markets itself as offering services including reviewing the SME’s business model with an IP expert and devising a clear IP strategy for the company, which clearly involves giving advice.

Some national IP Offices of EU member states offer the IP Scan service, in which 90% of the cost may be reimbursed through the EUIPO SME Fund grant scheme, designed to help EU SMEs with their IP registration costs.

The Spanish Patent and Trade Mark Office (SPTMO) decided to offer the IP Scan services whereby SPTMO examiners would advise SMEs, after considering the information provided by the SME. They would give the SMEs recommendations on how to integrate an IP strategy into the company’s business plan, including recommendations about what and how to protect the SME assets through IP rights (patents, trade marks and designs).

However, giving this kind of advice is one of the basic activities provided to companies, including SMEs, by IP professionals, who are obliged by their rules of professional conduct to preserve the confidentiality of communications between the SME and the professional (often subject to privilege). In addition, professionals are liable to negligence claims by clients if they believe that the advisor failed to take proper care of their interests (risks often covered by liability insurance), and IP professionals may not represent conflicting interests.

These obligations are normally included in the code of conduct of regulated professions (like the epi Code of Conduct for European patent attorneys) or of professional organisations. Similar obligations are found in the code of conduct of many national professional organisations, like the Spanish Association of IP Attorneys (COAPI). IP professionals must typically pass an exam to be entitled to represent clients in IP matters (such as the European Qualifying Examination (EQE) for European patent attorneys).

The IP Scan services are covered by the EUIPO SME Fund, even though it provided for the possibility of national offices providing these services directly or through external experts.

The Spanish Association of IP Attorneys (COAPI) was concerned about SPTMO’s decision to offer the IP Scan service through Spanish examiners and filed a complaint with the Spanish Courts. The complaint was accepted by the Courts and the decision to offer these services was declared void.

The SPTMO lodged an appeal, which has recently been dismissed by the Spanish Appeals Court. In principle, this decision can be appealed further to the Supreme Court.

An interesting statement made by the Appeals Court in its decision is that the SPTMO may not provide IP Scan services, since that would put at risk the principle of objectivity that must be present in every activity of a public body. Another important statement made by the Court is that providing advice to users would put a private interest before the general interest entrusted to the SPTMO.

In this sense, the decision clarifies that while the SPTMO may provide IP information to users, it may not give advice.