Beware of unsolicited invitations in relation to intellectual property

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There continue to be a significant number of companies writing directly to intellectual property (IP) rights owners, offering publication or registration services. These will generally request payment in return for publication of the IP right in a register or inclusion of the IP right in a database.

These companies frequently use names, logos or acronyms that suggest that they are authentic IP authorities or are in some way related to a patent or trade mark office. Some companies even have names that are confusingly similar to those of legitimate IP agencies, such as the European Patent Office (EPO) or the World Intellectual Property Office (WIPO), which can lead to a belief that they are part of such agencies or are acting on their behalf.  Examples of companies sending these unsolicited letters are the World Intellectual Property Database, the Worldwide Database of Trademarks and Patents and the Euro IP Register.

In addition, many of the letters are designed to look like invoices and may include wording to suggest payment must be made within a short time frame, such as 10 days or 14 days.

However, there is no legal requirement for patents, designs or trade marks to be included in any database or published in any form other than the official publications and registers maintained by patent and trade mark offices such as WIPO, the UK Intellectual Property Office (UK IPO), the EPO and OHIM, which is the office that grants Community registered designs and Community trade marks.  

The publications and databases offered in these unsolicited letters have absolutely no legal effect and there is no requirement whatsoever for an IP right to be included in them.  In general, any unsolicited communication requesting the payment of fees should be treated with extreme caution.

Many patent and trade mark offices have details on their websites of companies that are known for sending requests for payment for inclusion of IP rights in unofficial databases, registers or other publications.  For example, there are useful pages provided by the UK IPO, OHIM, WIPO and the EPO, meaning that it is possible to compare any communication you receive with the examples provided on these websites.

We are also happy to look at any communications received, to advise you as to whether they are authentic and whether any action is required.  Even if you are not currently a client of ours please feel that you can ask us to check any unsolicited letters of this type for you, in order to help you avoid paying an unnecessary (and often high) fee.

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