In the February 2008 edition of Venable's IP News & Comment, we issued a warning regarding numerous "official looking" patent notices received by several of our clients requesting payment for "registration" of a particular pending patent application. This update is provided as a reminder, particularly to those with pending international or foreign patent applications, to be wary of any notices mailed directly to you and to contact an attorney if you have questions regarding whether action and/or payment is required. The notices appear to be solicitations issued by sources unrelated to The International Bureau of the World Intellectual Property Organization (WIPO). They generally contain information related to a particular international PCT application and are being sent directly to the public address of record for the listed inventor and/or applicant. Through the notices, these outside sources are soliciting PCT applicants and agents to pay fees upwards of $2000 for services provided by their companies. Most notices refer to a “Register of International Patent Applications” and bear quite official looking insignia. The overall form of the notice appears to represent that the fees requested are necessary to maintain the specified application. A reading of the “fine print” on these notices, however, reveals that they are solicitations to list the published PCT application in a private database. Some of the language used in the notices is as follows: (click here)
It is important that PCT applicants and agents note that any notices or fee invitations issued by WIPO will bear the official “International Bureau of WIPO” designation in the bottom left-hand corner of the document. If the WIPO insignia is not present, the invitations are not in any way connected to WIPO or any of its official publications. WIPO alone publishes all PCT applications at no charge to the applicant, and there is no “Register of International Patent Applications” maintained or required by WIPO. Although the notices may offer other services in addition to the registration, such as access to other applications stored on the private database and patent research services, it is important to note that WIPO makes published patent applications publicly available on the internet. Businesses interested in a particular technology have ready access to all publications. The legal ramifications of the PCT publication are outlined in Article 29 of the Patent Cooperation Treaty.
The receipt of any notifications or invitations from any other outside sources should be reported immediately to the proper legal representative to ensure that unnecessary fees are not paid. If you receive any notices and are unsure of whether any action is required, please contact us. The PCT Information Services at WIPO may also be contacted in this regard at the numbers listed below.
Telephone: 011 41 22 338 8338
Fax: 011 41 22 338 8339
Some of the sources that have been known to issue these misleading notifications and invitations can be viewed at:
Note to Trademark Owners:
The same precautions apply to trademark owners. The following notice appears on the U.S. Patent and Trademark Office's website:
Warning to USPTO Customers re Trademark Monitoring and Document Filing Companies: You may receive unsolicited communications from companies requesting fees for trademark-related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies that offer these services are not affiliated or associated with the USPTO or any other federal agency. The USPTO does not provide trademark monitoring or any similar services. Such companies typically charge a service fee in addition to applicable USPTO fees. In many instances, applicants and registrants have mistakenly believed that the USPTO has issued these communications or that these companies are affiliated with the USPTO.