Patents Trade Marks Designs Copyright

Received an unusual communication?

April 26, 2013

When IP rights are applied for this generally produces a public notification which is provided on one or more databases. A number of parties search such databases to contact IP right holders, often with a view to seek an unwarranted payment from the IP holder. The golden rule is for any IP rights which we are handling, no legitimate invoice should be received from any party other than ourselves. Details of two schemes where IP right holders are being contacted are outlined below.

Unsolicited Letters and Invoices for UK Patent Renewals

A number of our clients have recently received unsolicited invitations from third parties offering to renew UK patents. While these companies might legitimately renew patents via the UK Intellectual Property Office if instructed to do so, we have noticed that their fees are extremely high. The third parties appear to be contacting proprietors of patents at least six months prior to patent renewal deadlines. The letters or invoices appear as though they have been issued by the UK Intellectual Property Office. However, the UK Intellectual Property Office does not contact owners of patents or their representatives in advance of patent renewal deadlines. If you have instructed us to file a patent, or you have instructed us to apply to become the Attorney of Record for your granted patents, we will contact you in good time prior to the renewal deadlines for your patents. If instructed accordingly, we will attend to renewals on your behalf, which will include paying official renewal fees to the UK Intellectual Property Office on your behalf. Please note that we have seen letters which have been sent from "Patent & Trademark Office" with an address of Euston Road, London. This is not the UK Intellectual Property Office, which operates the UK Patent Register.

Invitations to Register Domain Names

A number of our clients have recently received contact from domain name registration companies based in China or Hong Kong. The correspondence usually indicates that the domain registration company has been approached by a third party instructing them to register a domain name. The company, however, contacts the proprietor of a trade mark which is to potentially feature in the domain to offer registration of the domain to the trade mark owner in preference to registering it for the third party. Although the domain registration companies might be operating legitimate businesses, we feel this activity reflects a questionable business practice in seeking new clients. If a global top level domain (such as a .com domain) is available to register, it can be registered by any party. If a company or individual wishes to register a domain, it is usual to expect the domain registration company to process the registration without contacting a third party to offer them first refusal of the domain. If you have any questions or concerns relating to the above, please get in touch with your usual contact at Swindell & Pearson, or Katy Fuggle at [email protected]

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.