A Warning about Requests for Payment of Patent and Trademark Fees

June 15, 2010

This is a reminder that some companies and individuals are sending out unsolicited mailings to patent applicants and owners of international patents, designs and trademarks asking them to apply for entry in various (sometimes official sounding) publications, databases and "registers" in return for payment of a fee. These parties tend to make their offers in the form of invoices, which are usually sent out after the publication of the official patent, design, or trademark application.

You should be aware that these companies are NOT linked to any Government or Community Institution and there is NO obligation to pay them.

Recently, we received a new invitation identified as originating from "IPTD – International Patents & Trademarks Database". To view an example of the invitation, see here:  IPTD Database Form.  Other examples which have been brought to the attention of WIPO are here.

The solicitation from IPTD, as well as many of the other invitations to PCT applicants and agents to pay fees, 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 and have no effect on the legal status of the application and appear to have little to no value over the official publications.

The invitations often identify a particular PCT application by its international publication number (e.g., WO02 xxxxxx), publication date, title of the invention, international application number, priority information and IPC symbols – all information they can glean from the official application publication. The invitations typically refer to a payment, which is to be made in euro or US dollars, by check and/or money transfer to addresses in Austria, Germany, Hong Kong, Slovakia, Switzerland or the United States of America.

Patent applicants filing internationally under the PCT should note that the International Bureau of WIPO alone 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.

These requests to pay fees are often sent in envelopes with official-looking wording and images including ones which appear to bear official seals, like the WIPO/OMPI logo and the address of the organization.

Please carefully review all such requests.

For further information regarding this Legal Update, please contact Stephen Albainy-Jenei.