Today's Date: September 21, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

Patent Skullduggery: Patent Offices Warn of Patent Subterfuge


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
Blog | Twitter | Facebook | LinkedIn
Posted: February 14, 2012 @ 11:13 am
Tell A Friend!


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!

- - - - - - - - - -

For information on this and related topics please see these archives:

Tags: , , , , , , , , ,
Posted in: Gene Quinn, International, IP News, IPWatchdog.com Articles, Patent Cooperation Treaty, Patents, WIPO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

10 comments
Leave a comment »

  1. In the company where I worked, the issue became even more insidious. We would routinely receive these types of notices about our international patent applications (WIPO, EPO). They were usually invoices, with different letterhead, colors and names, but the same typos (!). It was usually addressed to “Director of IP” or “Patent Office” at our company. We knew that these were not legitimate invoices and ignored them. We starting receiving less and thought the issue had passed. Until one day, our accountant came up and said they were ready to pay this invoice – from one of these companies. Instead of addressing the invoice to the IP Department, they started sending them directly to “Accounting Department”, etc. Luckily our accountant came to us first – before actually paying the invoice. ( But I could imagine a situation where an accounting department would just pay – thinking they were acting responsibly.) We explained the situation with these types of invoices with our accounting department. They were now alerted and came to us whenever they received this type of invoice.

    The moral of the story is to discuss this issue not only with the IP Department, but also the Accounting Department…and maybe others?

  2. Very interesting story Karen. I can easily imagine an inventor’s busy practitioner or more likely their intern or paralegal just having an *invoice* like this paid, without even asking the inventor if they should or not. What makes it especially insidious is that there would seem to be no way to get them to cease and desist, unless you can find them and serve them something or other. At least here in the US we have the possibility of letting the Sun shine it’s light upon questionable practices by filing a complaint with the Federal Trade Commission. Operation Mousetrap stung an arguably deceitful *invention promoter* by making a determination that the company involved would be required to Pay Back the folks that were apparently deceived to the tune of $26,000,000, but somehow they scurried out of the light, by hiring high-power attorneys and getting their damages payments reduced to about 6 million as I seem to recall. Not good. Thousands of inventors lost anywhere from 4 to 12 thousands for mostly useless services. Typically once the inventor had paid the bill and nothing ever happened, the scammers would then just stop answering the phone or any e-mails. Next victim!

    I think you just made your IP Watchdog brand seem a whole lot more believable Gene, if there was ever any doubt about it in the first place. When Oblon Spivak seems to be getting things wrong, it really gives a guy something to ponder.

    Stan~

  3. Gene,

    The link to the “payment request from Registration of International Patent” is a dead link. Unable to view.

  4. WCG-

    The link is fixed. Sorry for any inconvenience.

    -Gene

  5. Thanks for posting on this. The first time I saw one of these a few years I actually laughed, it contained so many typos (including incorrect information about the application, as explained here: http://www.iliplaw.com/2010/03/psst-hey-bud-you-wanna-buy-some-air.html). But as Karen Grill noted above, these con artists have gotten better – since then I’ve had clients to whom these notices were sent directly ask me about them.

  6. The invoice is priceless. I wonder what NOK? 15580,00 is worth here in the US these days? Since the collapse of the Soviet Union, there are a whole bunch of really desperate folks in that general area.

    Stan~

  7. As someone mentioned as regards copyright enforcement and things like this, probably the only way to stop it is by holding the web servers accountable for what they allow their services to be used for. I believe in the past it was just a complaint process, and if enough complaints came in the server would confront the alledged infringer or whatever and ask if the accusations were true and to explain why they were not true. Failing that, the server just turns their access to the internet OFF, and they will have to figure something else out. Also a black list sort of thing was used, to warn others of their seeming desire to fleece innocent or gullible folks.

    If the server does not pay attention to the complaints, it might be possible for the server to be sanctioned here in the US, but probably not an option outside of the US these days. Fortunately for us, the USSR did not tend to teach English to their children, so most of them will only get a sort of general sense of what I am writing about.

    Dasvedanya,
    Stan~

  8. To illustrate the extent of this problem, I decided to compile the letters from a variety of websites in a “visual wall”. They can be found here http://patentwall.posterous.com/ I found over 60 that are different in one way or another.

    Hopefully this will help alert lawyers, inventors or small businesses so that they will not become victims.

  9. Thanks Karen, a very interesting wall.

    I could not help but notice that there are severl distinguishing marks on several of the papers. Do you think that these sources have registered their marks? Perhaps we should send them a letter…

  10. I received a comment via e-mail that alerted me to the fact that World Database of Trademarks and Patents sends out these notices as well. It seems that their website, wdtp.biz largely resembles the older version of wipo.int. Additionally, I am told that the invoices sent look like the cover page of the PCT applications, including the bar code that accompanies PCT publications.