Scams targeting PCT Applicants

Unscrupulous operators continue to prey on PCT applicants. An organisation calling itself the “Worldwide Database of Trademarks and Patents” is taking advantage of PCT Applicants who may not fully understand the steps involved in the PCT prosecution process. The organisation attempts pull the wool over Applicants’ eyes with the use of flowery legal verbiage which sounds very official and signifies nothing. By using the word “RENEW” the organisation masquerades as a patent renewal agency.

Usually, all that these scams offer to do is to put details of your PCT application into their own spreadsheet, for no conceivable practical purpose. For this they charge a few thousand dollars. Usually, one can detect the lie in these fake documents by reading through the fine print and establishing exactly what service or value (or lack of these) is being offered. Often, also, the e-mail addresses and other contact addresses for these organisations lack credibility.

In 2010 a company in the United States of America (“Federated Institute for Patent and Trademark Registry”) was found by a Florida court to have violated the state’s Deceptive and Unfair Trade Practices Act by sending misleading “invoices” to patent and trade mark applicants – including to PCT users.

The company was requesting payment for a service which in fact had no value – listing PCT applications in its “Register”. WIPO cooperated with the Florida authorities in this case. During the trial, a PCT expert from WIPO provided testimony about the misleading nature of the invitations and the harm suffered by PCT applicants. WIPO will continue to cooperate with law‑enforcement authorities in states and countries which make efforts to curtail these practices.

As a general rule, one should not have to pay monies for patents and trade marks to anyone other than one’s IP attorney or a specific renewal agency which you have selected. If in doubt, always check with your IP attorney or with WIPO directly (see contact details below) before paying anyone. Warnings are consistently published in the PCT Newsletter about invitations to PCT applicants and agents to pay fees that do not come from the International Bureau of WIPO and are unrelated to the processing of international applications under the PCT.

WIPO have set up a special page which shows copies of the various scams of this type and provides a letter with recommended wording for informing your inventors about this problem.

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

PCT applicants and agents should note that 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 the legal effects of international publication are set out in PCT Article 29.

Clients of Moore Intellectual Property are cautioned to be aware of these scams. Please inform anyone in your organisation who is responsible for payments. Please also let your inventors know that they may be targeted. The scamsters use addresses harvested from details filled in by applicants on PCT application forms at the time of filing, which are subsequently published.

In case of doubt in relation to any invitation or request to pay fees, please do not hesitate to contact the PCT Information Service of the International Bureau at:

PCT Information Service:

Telephone: +41 22 338 83 38
Fax: +41 22 338 83 39
E-mail: pct.infoline@wipo.int

Otherwise, please feel free to contact our Mr Rory Moore:

Moore IP Contact Details:

Telephone: +27 (0)31 785 1190
Cellphone: +27 (0)78 131 4104
E-Mail: mail@moorepatent.co.za