For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 18 February 2011

Rogue websites, scams -- and the competition result

There's a wonderful book by T.S. Eliot called Old Possum's Book of Practical Cats (here). While the IPKat can't pretend that all the cats depicted in this volume are entirely practical, he likes to feel that -- despite his years in the fragrant groves of academe -- he can do something practical from time to time.  One of the practical things he does best is asking other people who are more practical than he to do the practical things he'd like to do if only he were a bit more practical.

It is with this in mind that the above preamble leads to some very practical information for which the Kat thanks a regrettably anonymous informant, who has done a bit of a test-drive of some of the intellectual property scammers which are listed on the website of the World Intellectual Property Organization (WIPO) under the heading WARNING: Requests for Payment of Fees [hold on, don't most of us aspire to that too ...?]. The review runs like this:
"I am sure that all patent and trade mark attorneys have experience of clients receiving invitations to pay fees for entering details of their application into a private register. Clearly this serves little purpose other than to line the pockets of the company making the invitation. A particular problem appears to be associated with International patent applications. Indeed, Jeremy has recently been highlighting his discussions with WIPO concerning one of these companies, WIPD (see here and back-links).

Having recently had clients who have (mercifully) contacted me to check whether invitations they have received are bogus, I have put together some information about the main and most recent offenders.

First, note that WIPO produce a list of the relevant companies, which they appear to update when they become aware of new ones. This is available here.

The companies fool prospective applicants by including similar information to that contained in official WIPO publications. The small print - which gets them off the hook - is well down their 'invitation' and unlikely to be read. Clearly the companies sending out the invitations are reviewing published applications. Recent experience suggests that WIPD and ODM are particularly quick off the mark on this front. Clients used to receiving valid invitations for payment of fees from third party renewal companies are perhaps more likely to be fooled.

Some of the companies actually have websites. Of the few reviewed, the WIPD site is perhaps the most professional looking. Thankfully search engines seem to list the WIPO warning towards the top. A number of Patent Offices and blogs also discuss the subject.

Here are some of the current offenders appearing at the top of the WIPO list:

WIPD (World Intellectual Property Database). International patent invitation is relatively professional, including information which mirrors cover sheet of PCT pamphlet published by WIPO. Website at http://www.wipd.biz/ (with new logo!) is also relatively professional, to the untrained eye, including some background information on patents and trade marks.

ODM (Patent Trademark Register). Appearance less like that of PCT pamphlet but containing similar information. No website located in brief search.

RIPT (Registration of International Patent). Appearance again less like that of PCT pamphlet but again contains similar information. Appears to have a website.

ITPD (International Trademarks & Patents Database). Appearance again less like that of PCT pamphlet but again contains similar information. No website could be found from brief search."
Now for the competition.  You can read the details in full here.  In short, the objective was to identify a good and affordable strategy for dealing with a rogue website operated by a World Health Organization lookalike.  Most of the entries didn't come close to acceptability for one reason or another, but here are the two best ones -- by Charlie Winckworth (Hogan Lovells) and Martin Husovec (member of the European Information Society Institute).  The Kat has decreed that both will be treated to the prize:, a pristine copy of Alex Tsoutsanis's excellent Trade Mark Registrations in Bad Faith, just published by Oxford University Press (details here).  Apologies are due to everyone for the delay in getting this posted: this member of the blogging team is insufficiently practical to devise a way of avoiding even a foreseeable and indeed diarised pile-up of work ...

4 comments:

McCPA said...

Of course, another way for WIPO to tackle the problem is simply to write directly to each named applicant, explaining what is about to occur, just before the publication of their application, timed so that they get the letter a day or two before the direct mailers?

They already send out a letter to each agent which arrives late enough that if the agents use it to trigger a letter to the applicant reporting publication it will arrive after the letters from the direct mailers...

Anonymous said...

One thing I have seen at our national patent office is patent proprietors throwing offical requests for payment (e.g. renewal fees) in the bin, thinking that they were scams.

This of course leads to a number of red faces, and urgent requests for restitutio!

Anonymous said...

The first intervener appears to echo my own suggestion from a few weeks back.

But why should this ONLY be the problem of the IP offices?

Perhaps representatives ought to warn their customers to consult with them in general before reacting on any direct solicitation received...

Anonymous said...

Perhaps this one too belongs to that category...

The Italian attorney who initially represented the hapless applicant, apparently under the provisions of Article 134(8) EPC, in case R17/09 employs a logo on her letterhead which bears a conspicuous resemblance to WIPO's former logo, and those of its forerunner organisations. It was even reproduced on EPO form 1003. Nice touch, too bad the PCT application number was wrong.

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