PA 07/2011: Measures that are being taken by the International Bureau against fraudulent requests for payment of fees, and actions that can be taken by the applicant or agent

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I am a patent attorney working on behalf of a corporate applicant which has filed a large number of PCT applications. We and our inventors have received a number of invoices from companies with official looking names and logos, for the publication or registration of some of our published PCT applications.  I understand that these invoices have nothing to do with WIPO, and that there is no need to pay them.  This “practice” by certain unscrupulous companies is rather worrying, and I wondered what, if anything, WIPO is doing about this?  Also, is there anything that applicants can do to assist WIPO in its efforts to combat this fraudulent practice?

A:  As many readers of the PCT Newsletter are probably aware, for a number of years, unscrupulous entities and individuals in various countries have attempted to mislead PCT users (as well as users of other IP services provided by WIPO) into paying fees which have nothing to do with the processing of their PCT applications and which have no value above and beyond the services already provided by WIPO or the applicable national or regional Office.  These entities have intentionally designed their notices to appear as invoices emanating from an official source.  They include publicly available bibliographic data about the international application, and are usually sent to applicants and inventors soon after publication of the international application.  In a number of cases, the notices (and associated websites) bear a confusing similarity to WIPO’s name and logo.  It is the International Bureau of WIPO alone which 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 it has legal effect as set out in PCT Article 29 WIPO urges applicants and inventors not to pay the fees requested, and where there is any doubt about the invitation received, to contact WIPO or their patent attorney.

Publication in the PCT Newsletter and on the PCT website

As soon as WIPO became aware of this fraudulent practice in 2002, PCT users were warned by way of an article in the PCT Newsletter (see PCT Newsletter No. 09/2002).  Ever since then, in the hope of raising awareness of these misleading invoices among the PCT user community, WIPO frequently publishes warnings about the invoices in the PCT Newsletter, requesting attorneys and agents to inform their clients that they may receive such invoices.  Also, whenever new invoices for payment of such fees are brought to our attention, these examples are posted on the PCT website, where there are currently 45 such invoices posted, at: 

http://www.wipo.int/pct/en/warning/pct_warning.html

It is for this reason that we rely a great deal on applicants to inform us about new invoices, so that we can make other members of the PCT community aware of them.

Warning texts to patent attorneys

WIPO has also drafted a warning text and sent it to patent attorneys and IP associations worldwide, with the idea that it could be branded with company or law firm headers or logos and forwarded to clients and/or inventors to warn them that they may receive such misleading invoices, and/or be posted on company or law firm websites or Intranet sites.  The text of this warning can be seen by clicking on the relevant link on the right hand side of the above-mentioned web page.

Requests for patent Offices to take action

WIPO is simultaneously reaching out to the heads of all of the world’s patent Offices to engage them in an effort to fight back against the purveyors of these fraudulent invoices.  The text of a letter that has been sent to patent Offices has been posted on the PCT website at:

http://www.wipo.int/pct/en/warning/1309.pdf

In the letter, WIPO requests assistance in helping raise awareness among PCT users by adding links from the national office website to WIPO’s website where users can find more information about these fraudulent schemes, engaging in an awareness-building campaign within the country concerned, aimed at applicants and representatives, and analyzing what actions, if any, might be taken against those who send out the fraudulent invoices.  It also asks for suggestions as to what additional actions could be taken by WIPO. 

A number of patent Offices have informed the International Bureau that they have been taking measures to counteract these misleading invoices by issuing press releases, issuing warnings to their nationals and residents, and posting examples of the misleading invoices on their websites, as well as warning attendees at seminars.  Some have even initiated legal proceedings against the authors of these invoices.  Links to notices issued by the patent Offices of Australia, Austria, France, Germany, Israel, Japan, Switzerland and the United Kingdom, as well as the European Patent Office, have been posted at:  http://www.wipo.int/pct/en/warning/pct_warning.html.  This page will be updated whenever we receive information from other Offices.

Legal action

Despite the efforts of WIPO and its partners, these fraudulent requests have proliferated, their methods have become more sophisticated, and they have collected vast amounts of money from unsuspecting inventors and small businesses.  As a result, WIPO has become increasingly active; we have reached out to government authorities in countries where these activities persist, and have achieved some success in having legal proceedings initiated against these entities and/or prompting changes in the logo and name used by the entity so as to not so closely resemble that of WIPO.

WIPO has also supported countries where the governments have attempted to take action.  For example, the Attorney General of the State of Florida in the United States of America filed a civil lawsuit against Federated Institute for Patent and Trademark Registry (FIPTR) and one individual alleging that the invitations sent to PCT applicants by FIPTR violated the state’s Deceptive and Unfair Trade Practices Act.  At the request of the Florida Attorney General’s Office, WIPO assisted in the preparation of the case and provided expert testimony at the trial, which resulted in a sizeable judgment against the defendants.  The company was found to have violated the state’s Deceptive and Unfair Trade Practices Act by sending misleading “invoices” to patent and trademark applicants – including to PCT users.  The company had been requesting payment for a service which in fact had no value – listing PCT applications in its “Register”.  As another example, the Industrial Property Office of the Czech Republic has filed a criminal complaint against one such entity operating on its territory.  We hope that other governments will assist us in taking appropriate legal action against those who are engaged in these deceptive business practices.  WIPO will continue to cooperate with law-enforcement authorities in countries which make efforts to curtail these practices.

What applicants or their agents can do

If you receive a request to pay fees and you are unsure of its legitimacy, you should check whether such an invoice appears in the above-mentioned list of examples on the PCT website.  If you do not find a similar example, and are still in doubt, please do not hesitate to contact the International Bureau:

Telephone:                 (41-22) 338 83 38

Fax:                             (41-22) 338 83 39

E-mail:                        pct.infoline@wipo.int

If the invoice appears to be fraudulent, you should alert all colleagues who might receive similar invoices, as well as the inventor(s), to ensure that it is not paid.  If you have received such an invoice from a source which is not listed on the PCT website, you are invited to send a copy of the invoice to WIPO, for inclusion in our collection, at the following e-mail address:

pct.legal@wipo.int

You could also make a complaint to the competent government authorities and/or consumer protection groups — this may increase awareness of the problem by the authorities, and possibly encourage action against the senders of these invoices.


 

 

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