Patent Skullduggery: Patent Offices Warn of Patent Subterfuge
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Follow Gene on Twitter @IPWatchdog
Posted: Feb 14, 2012 @ 11:13 am
The UK Intellectual Property Office (UK IPO) characterizes it as misleading, warning “don’t be misled.” The European Patent Office (EPO) calls it deceitful, characterizing it as “subterfuge,” and further pointing out that “their services have no legal effect whatsoever.” The World Intellectual Property Organization (WIPO) says that they are “unrelated to the processing of international applications.” Yet many continue to believe that the nefarious and seemingly ubiquitous solicitations sent to patent applicants and owners are official invoices that must be paid in order to continue to move forward with an international patent application or foreign patent application.
Skullduggery is defined as “craft deception or trickery,” which seems an appropriate characterization of the unsolicited requests for payments sent by for-profit companies to unsuspected patent and trademark applicants and owners world-wide. On February 2, 2012, I wrote Trademark Skullduggery, which discussed solicitations sent by for-profit companies for publication services relative to U.S. trademark applications. The mailings, which look like invoices and seem official, offer publication of trademarks for a hefty fee, typically $960. Any fair reading of these trademark letters should lead many, if not most or even close to all, to believe that there is a scheme to misrepresent the unknowledgeable into paying for something that offers no legal benefit whatsoever. After all, the United States Patent and Trademark Office already publishes trademark applications and issued trademarks, so to the extent publication may be desirable the applicant already receives that for the filing fee to the USPTO.
Upon writing Trademark Skullduggery, I was alerted to the fact that the same type of scheme is at play with respect to the procurement of international patent rights. In fact, WIPO maintains a warning page alerting users of the Patent Cooperation treaty (PCT) process about unsolicited requests for payment in exchange for legally inconsequential services. The WIPO warning page explains:
It has come to the attention of the International Bureau that PCT applicants and agents are receiving invitations to pay fees that do not come from the International Bureau of WIPO and are unrelated to the processing of international applications under the PCT. Whatever registration services might be offered in such invitations, they bear no connection to WIPO or to any of its official publications.
The invitations often identify a particular PCT application by its international publication number (eg: WO 02 xxxxxx), publication date, title of the invention, international application number, priority information and IPC symbols; examples of such invitations can be viewed below.
If you think the letters sent to trademark applicants and owners represent a scam, wait until you take a look at the letters sent to those who file PCT Applications. For example, take a look at this payment request from Registration of International Patent (RIPT). At least the request for payment we at IPWatchdog received relative to our trademark applications says in reasonable font and size: “This is an offer, not an invoice.”
To the contrary, the RIPT request for payment looks like an invoice. You have to go to the very fine print at the bottom to get any sense that this is not official and is an unnecessary payment. The fine print, which can’t be larger than 5 point font if that, says:
We offer to include your International Patent Application text in our private International Patent Application Directory, pleas [sic] notice that this registration has not any connection with the publication of official registrations, and is not a registration by a government organization. You confirm this offer by remitting the amount and in doing so, you confirm that the wording of the entry entered by our selves [sic] and rendered here is correct. We have not any business relation Yet [sic]. This is not a bill. This is a solicitation. You are under no obligation to pay the amount stated below, unless you accept this offer. Please take notice of our general terms of trade overleaf. Any request for amendments and additions are to be made in writing. Sincerely RIPT s.r.o.
The typos, misspellings and awkward wording of the fine print should give pause, but how many people do you suppose read the fine print? A mailing that looks like an invoice, appears official, offers useless publication services and only notes the voluntary nature of the “offer” in 5 point font is, if you ask me, deceitful. In fact, the EPO calls this type of solicitation “subterfuge,” which is defined as “deceit used to achieve one’s goal.” The EPO warning page says (bold in the original):
Numerous applicants and patent proprietors have informed the European Patent Office that firms and individuals using names, abbreviations or emblems that appear to be official have been inviting them to register patents in unofficial registers or publications.
The European Patent Office would point out that it alone performs legally effective publication and registration of European patent applications or patents, and that it does so automatically.
The European Patent Office warns all concerned to guard against the subterfuges of such firms and individuals. You should also be aware that because their services have no legal effect whatsoever, there is no obligation to pay.
WIPO and the EPO are not the only Patent Offices to post a warning regarding this type of subterfuge. For example, the UK IPO also has a warning page, which has the heading — “Warning: unsolicited mail – do not be misled.” The UK IPO warning page goes on to say (bold in the original):
A number of companies are sending unsolicited mail to applicants for, and owners of, intellectual property rights eg trade marks, patents and designs. These invite the recipient to sign and return a document and pay a fee for a particular service.
Many of our customers have told us that they thought the mails came from an official source and thought they had to use, and pay for, the services offered. Examples of the types of services being offered are described below. You should be aware that these companies are not linked to any Government or Community Institution and there is no obligation to pay the fee.
If you receive such a letter or invoice, check carefully to see exactly what service you are being offered, whether you want it and if it comes from an official source. If you are in any doubt, please check with your Trade Mark or Patent Attorney, with your legal representative, or other IP adviser, alternatively call us on 0300 300 2000.
The page goes on to explain that these type of letter have been sent out as an unsolicited renewal reminder, an unofficial publication offer and as unsolicited community trademark filing assistance offer.
But are these “publication services” really indicative of a scam? I really don’t see how anyone could characterize it any differently. There is no reason to seek private publication of a trademark or a patent. As the WIPO Warning page explains (in bold in the original):
PCT applicants and agents should note that it is the International Bureau of WIPO alone which publishes all PCT applications promptly after the expiration of 18 months from the priority date (see PCT Article 21(2)(a)); there is no separate fee for such international publication, and the legal effects of international publication are set out in PCT Article 29.
Simply stated, anyone that pays these fees obtains absolutely no benefit. Payment is meaningless. In fact, no one in the industry would ever search a private publication like these because the Official government bodies are required to, and in fact do, publish applications and granted trademarks and patents. When one engages in a search it is these official databases of all published applications and granted trademarks and patents that are searched. Not paying the amount requested matters not one scintilla.
So spread the word among your clients, perhaps warning them of this type of ongoing subterfuge in advance so that they know not to make payment.
If you see any of these types of letters or invoices or requests for payment please let me know. After all, as Justice Brandeis famously said: “Sunlight is said to be the best of disinfectants…” So let the disinfecting begin in earnest!
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.