Got a Bill from PatentOnline.org? Beware Trademark Fraud

Our company, Innovationedge, has pursued a couple of trademark registrations. This week we received two bills apparently for European trademark registration. Each bill showed our recently published trademark and requested over $2000 for registration, payable to an office in Switzerland. It looked official, but a careful examination revealed several problems. First, there was no telephone number to call to verify details. There was also no evidence that this was in response to a request we had made. Most telling, there was fine print at the bottom in bad English indicating that this was for registration in their private database and not on behalf of any government organization.

Ah, right! Pay a couple thousand dollars and they'll list you in a private, unofficial database,. Hey, I can do the same on my laptop - and I'll only charge $1000.

The envelope it came in indicated that it was mailed from the Slovak Republic.

My recommendation if you get any strange trademark registration invoices from the Slovak Republic that are associated with patentonline.org, don't pay! It's a fraud, A scam. A con. Theft. Sickening!

Pitfalls of Filing Non-English International Patent Applications

"When English is Best—Pitfalls of Filing Non-English International Patent Applications" by Gladys H. Monroy and Barry E. Bretschneider (June 2005) is a good resource for clients considering parent patent applications in foreign countries. One recommended strategy if a non-English application is being filed is to also file it as a provisional non-English application in the US, and later claim priority to it in an international PCT application. This can maintain the earliest possible 102(e) date. Here is the specific recommended strategy:

(1) On the same day that the foreign application is filed in the foreign patent office (January 1, 2001), file that foreign application in the foreign language as a provisional application in the USPTO under 35 USC 111(b).

(2) File an IA under the PCT in the English language in the foreign patent office within twelve months of the filing date of the provisional application claiming benefit of the provisional application (January 1, 2002). The IA must designate the United States, and be published in the English language by WIPO (under PCT Article 21(2)).

(3) File a certified English translation of the provisional application at the USPTO within sixteen months of the filing date of the provisional application or within four months of the filing of the IA (whichever is earlier).

(4) File a U.S. national stage application under 35 USC 371 in the U.S. within thirty months of the filing date of the provisional application (July 1, 2003).