Several of our clients have enquired recently about notices they have been receiving regarding PCT applications. These notices are issued by sources other than The International Bureau of WIPO (WIPO). These outside sources are soliciting PCT applicants and agents to pay fees for services provided by their companies. The requested fees can be over $2000. Although such notices have been around for some time, we have seen increased activity lately.
Most notices refer to a “Register of International Patent Applications.” Some of these notices bear quite official looking insignia and appear to represent that the fees requested are necessary to maintain the application. The notice may offer services in addition to the registration. A reading of the “fine print” on these notices reveals that they are generally solicitations to list the published PCT application in a private database. To our knowledge, there is no benefit to these services, and the fees should not be paid. WIPO makes published patent applications publicly available on the internet, and businesses interested in a particular technology have ready access to the publications.
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; there is no “Register of International Patent Applications” maintained or required by WIPO. 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 indicated 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 www.wipo.int/pct/en/warning/pctwarning.htm.