IP owners beware: unscrupulous or scam IP services are targeting you
For a number of years now, owners of different types of IP rights have been receiving unsolicited mail and invoices from companies charging for unnecessary or fraudulent services. For the unsuspecting person, these might seem genuine but if you know what to look for, you can avoid falling victim to these practices.
What is happening?
Owners of patents, trade marks and registered designs are receiving letters, emails and invoices inviting them to pay hundreds or even thousands of pounds in relation to their IP. On the face of it this may be presented as being for legitimate looking services such as renewals or registration. The correspondence can look very convincing, it can include details such as your registration number, and even the name of your attorney and the reference they use when corresponding with you.
However, on closer inspection, it will be seen that these services have no legal effect. There is no need to pay these invoices and the service has little benefit, if any.
This is on the slightly more legitimate end of the scale. At the other end, invoices may simply be fraudulent and relate to services the companies have no intention of offering.
How did they get my details?
When you file for IP protection, it is necessary to provide details of the owner including their name and address. This is placed on a register that is open for public inspection. This cannot be avoided and is a statutory requirement. It is important for proper functioning of the register that owners of rights can be contacted – for example for third parties to try and take licences or object to the right being granted.
Can the authorities do anything?
The UK IPO have had some success when the branding on the invoice got too close to the IPO’s own branding. However, tracking down and stopping the companies sending these invoices is very tricky – they can be based anywhere in the world, and when you take one down, another one pops up somewhere else.
What can I do?
- Be vigilant. If an invoice seems strange or is unexpected, question it.
- Read the small print. In some cases, the small print will make clear what services are actually being provided, but it is often in the very small print.
- Ask. If you have a legal representative, check with them – any communication regarding your IP should come from them, and not from a third party. If you represent yourself at the patent office, any communication should come directly from the patent office. If you have any doubts ask – either ask your representative or the patent office themselves.
Where can I find out more?
The various national and international IPO bodies also have resources to help you spot these invoices, including example invoices. These include:
European Union Intellectual Property Office
World Intellectual Property Organization
World Intellectual Property Organization: PCT applications
If you would like to discuss any of the issues raised in this article, please contact the author or your usual Barker Brettell attorney.
