GovWire

Warning: misleading invoices – don’t be fooled

Intellectual Property Office

February 20
07:00 2012

These companies are not linked to any government or community institution - you are NOT obliged to pay their fees.

If you receive an unsolicited invitation DO NOT PAY IT until you have checked to see what services are being offered and it is from an official source.

Appearance of the invitations

Invitations are often issued as official-looking invoices.

Customers have told us they thought the mails came from an official source and think they have to use and pay for, the services offered.

It has even happened to us - see the invoices we have received (PDF, 162KB, 2 pages) and our response (PDF, 827KB, 4 pages).

Services the invoices offer

Renewal of your Intellectual Property (IP) right

Customers have received unsolicited reminders from companies, offering to renew their IP right for fees greatly in excess of official fees.

These can take the form of an official-looking invoice, but these companies are not linked to us. You are under no obligation to use their services.

We are the only official body which issues reminders for the renewal of a UK IP right.

We send reminders direct to the registered rights holder or their official representatives.

For granted patents, we send

  • upon request, an email renewal reminder (PDF, 126KB, 1 page) approximately four to six weeks before the renewal is due
  • if applicable, a late renewal reminder(PDF, 157KB, 1 page) approximately six weeks after the date it should have been renewed

For registered trade marks and designs, we send

  • a renewal reminder(PDF, 175KB, 2 pages) approximately 3 months before the renewal is due

Renewal fees can be paid direct to us using our online patent renewal and trade mark renewal services.

This can be done by

  • you
  • your representative
  • through a specialist renewal payment service provider

Renewal service providers are companies who specialise in managing IP renewals on your behalf. Their services are provided at a wide variety of costs.

If you use the services of an IP representative or specialist renewal payment service, you should confirm their arrangements for reminding you of the need to renew your IP right.

Entries in publications or registers

Customers have received offers of entry in official sounding publications or registers in return for a fee.

You are under no obligation to pay this fee.

Details of all UK applications and granted patents and registered trade marks and designs are automatically entered onto our official registers:

The European Patent Office (EPO), World Intellectual Property Organisation (WIPO) and the Office for Harmonization in the Internal Market (OHIM) all operate similar official registers.

These automatically record all applications and granted patents and registered trade marks and designs either filed directly with them or through us.

WIPO has further information on unsolicited invitations relating to international patent applications.

Community Trade Mark Filing

Businesses are contacting applicants of UK trade marks offering to file a Community Trade Mark based on the data present in your UK application.

There is no obligation for you to file a Community Trade Mark but if you decided to consider such an offer, you should check:

  • whether the person is offering to represent you before OHIM in the event of any problems with, or objections to, your application - as not everyone can do this
  • whether the fee quoted by the UK service provider includes the official fees for making a Community Trade Mark application. If not, how these fees will be paid

There is no obligation on UK trade mark applicants to do this. If you are interested in gaining European protection, you can apply direct to OHIM.

If you receive an unsolicited invitation

Check to see what services are being offered and if it is from an official source. You are NOT obliged to pay any fees as these companies are not linked to any government or community institution.

If you receive a misleading invoice, we would like to hear about it and see a copy.

If in doubt, check with your patent or trade mark attorney, solicitor, patent advisor or inventor-support organisation. Or contact us on 0300 300 2000.

You can also contact the Institute of Trade Mark Attorneys or the Chartered Institute of Patent Attorneys in relation to sources of initial legal advice regarding any contractual aspect of an unsolicited invitation. They also provide general advice on patents, designs and trade marks.

If you have received an invoice in relation to your trade mark or patent please will you report it to Action Fraud, separately, using this online reporting tool

Action Fraud is the online reporting portal for all instances of fraud affecting UK citizens and businesses and it is operated by the City of London Police who are the UK lead Force for the investigation of fraud. The fraud you are reporting is classed as invoice fraud. Reports are collated and analysed by the National Fraud Intelligence Bureau (NFIB) and depending on a scoring matrix together with an assessment of available evidence, they can be sent to an individual police force for investigation.

The NFIB also send out industry alerts when new methods or techniques to defraud companies are identified.

Whilst we cannot guarantee a response by law enforcement it would be helpful if you kept both the invoice and accompanying envelope in a plastic sleeve and handle it as little as possible

Thank you for your cooperation.

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