The UK Intellectual Property Office (UK IPO) and the European Patent Office (EPO) continue to receive reports of applicants and proprietors being approached for payment by firms offering to perform official processing such as registering patents and publishing patent applications. These firms often use names, abbreviations and/or logos which are confusingly similar to those used by official offices such as the UK IPO, the EPO, and the World Intellectual Property Organization (WIPO).
These firms do not act on behalf of the official offices and the services they offer cannot replace processing that is carried out by the official offices. To the extent that these firms offer to replicate such processing, applicants and proprietors are therefore under no obligation to pay any invoices issued by such firms.
In relation to publication of applications and registration of patents in particular, it is noted that only the official offices themselves can carry out these acts with the proper legal effect. The UK IPO, EPO and WIPO all publish pending applications automatically without additional steps needing to be taken, or fees paid, by applicants. Similarly, any patent which is duly granted by one of these authorities will automatically be published. Any payment which is made to third party firms in relation to publication or registration will therefore have no legal effect in proceedings before the UK IPO, EPO or WIPO.
Further information and examples of invoices received in relation to UK, European
and PCT applications and patents can be found respectively at
UK IPO - www.ipo.gov.uk/warning
EPO - www.epo.org/warning.html
These websites provide examples of communications from firms who do not perform official processing of patents and patent applications.
The UK IPO takes this matter very seriously and is taking steps to prevent such firms from misleading the public. The UK IPO was recently successful in its legal action against Intellectual Property Agency Ltd (IPA). IPA was found to be liable of trade mark infringement and passing off and ordered to pay £500,000 plus legal costs (the maximum legal penalty under the circumstances). It is hoped that the size of the penalty will discourage other firms from continuing to mislead the public. Further details can be found at https://www.gov.uk/government/news/ip-scammers-facerecord-financial-liability.
If you are in any doubt about the authenticity of a letter or invoice you have received, please do not hesitate to get in touch with your contact at J A Kemp.
13 November 2015