It seems that around every corner lately, a scam awaits. Well, the same can be said as it relates to the patent and trademark world. Patent and trademark owners don’t want to inadvertently lose their valuable intellectual property rights because they failed to pay required maintenance fees or file necessary paperwork with the U.S. Patent and Trademark Office (USPTO) or the World Intellectual Property Organization (WIPO). However, scammers frequently prey on IP owners’ fears by sending them fake notices and “invoices” and fleecing them for unnecessary and fraudulent payments. Some of these documents even have CANCELLATION in bold letters across the top; of course, you’re going to pay attention, right?
Both the USPTO and WIPO recently issued alerts warning patent and trademark owners of these scams. As the USPTO advises, these notices come from private companies unaffiliated with the agency. They attempt to look official “because they contain information taken from public records available on the USPTO’s databases,” incorporate cautionary language such as “patent cancellation notice” or “important notification regarding your federal trademark,” or include “U.S.” or “United States” in the company name and letterhead.
Similarly, WIPO recently published a warning that “PCT applicants and agents are receiving invitations 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.” As with the USPTO fee scams, the fake WIPO notices mimic official-looking ones by containing detailed information about a PCT application such as its international publication number, publication date, title of the invention, international application number, priority information, and IPC symbols.
If you hold a U.S. patent or trademark, you can avoid these scams and help stop them by being alert to the following advice.
- All official correspondence about your U.S. patent or trademark will come from the “United States Patent and Trademark Office” in Alexandria, Virginia, with zip code 22313 or your attorney of record
- Official emails from the USPTO will be from the domain “@uspto.gov.”
- If you receive any notices concerning your U.S. patent or trademark that do not come from the USPTO’s address and ask you to remit payment to an address that is not the USPTO’s, you are dealing with a private company.
- You can verify maintenance requirements for your patent or trademark registration and check if fees are due on the USPTO’s website. The site includes a portal where patent owners can find due dates for maintenance fees.
- You can make required fee payments directly to the USPTO yourself or with assistance from your lawyer or registered patent practitioner.
- If you receive a solicitation about your patent or trademark you believe is deceptive, you may file an online consumer complaint with the Federal Trade Commission (FTC) or by contacting firstname.lastname@example.org.
- If you are unsure contact the USPTO directly or check in with your attorney.
If you are an American PCT applicant and believe you have received a fraudulent fee notice, WIPO also recommends that you report it to the FTC. Applicants from other member countries should report their complaints to their own country’s consumer protection agency.
If you have questions about patent or trademark maintenance fees or have concerns about a recent notice, please contact the attorneys at The Dobrusin Law Firm.