Beware of bogus requests for fees
Tuesday 2nd July 2013
One of necessary evils associated with obtaining a registered intellectual property right is the need to pay regular “maintenance” or “renewal” fees to the relevant intellectual property office. These fees help to fund the running of the office, and also serve to clear the register of unwanted or redundant IP rights by requiring the IP owner to take a positive step to keep the right alive.
Around the world a number of unscrupulous organisations take advantage of this situation by attempting to trick IP rights holders into paying for unnecessary services. This is done by sending the rights holder a notice asking them to pay a fee, in exchange for which the company offers (in very fine print) to add details of the particular IP right to an online archive (a completely unnecessary service). The notice is usually designed to appear to be an official invoice, and is often timed to coincide with the due date of a renewal fee. The fee requested by the notice is often consistent with that required by the relevant IP office. The intention is to trick the rights holder into believing that the notice originates from a patent office, or from a legitimate renewals service such as CPA Global.
The World Intellectual Property Office (A United Nations agency dedicated to the use IP) has a web page dedicated to warning users about this scam (www.wipo.int/pct/en/warning/pct_warning.html). The page has details of more than 60 different examples of such notices.
The level of this type of activity is constantly on the rise. Recently a Baldwins client received just this sort of notice from no fewer than four different organisations, all timed to coincide with the renewal due date for one of its patents. One of these notices even included a warning paragraph cautioning the client to disregard any similar notices they might receive from other parties!
IP rights holders need to be vigilant that they disregard these bogus requests, while ensuring that they do not overlook reminders from their legitimate renewals service. Baldwins uses the services of CPA Global to remind its clients when renewal fees fall due. You should treat any request for IP related fees which does not come directly from Baldwins or CPA with suspicion. If you have any doubt about the legitimacy of such a notice then you should check with your usual attorney before sending payment.