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Customer feedback - October to December 2010

Feedback received is in the first column. Read across the row to find our response and any additional measures taken.
General Feedback Response and additional measures taken
You said "I'm currently setting up a business and am looking at applying for a trademark for my product's name. Because of that, I've been using the trademark search on your site. I am thankful for this, but do have a suggestion. I found the link to it so hard to find that I ended up Googling "trade mark search" to try and get to it. Therefore, can I politely suggest you look at including the link on the main "Trade mark" page on the site, instead of it being in the "Online TM services" section? Again, I'm very thankful for this service, but making the link easier to find might save people the frustration that I experienced. Sorry if I sounded like an annoying customer there; I just think this might really help people!" We replied "Thanks for the attached suggestion about adding a link on the trade mark landing page to the 'search trade marks'. Sorry it took you so long to find it. In light of your suggestion we are going to add this link onto the page."
Whilst waiting to be transferred to TM Tribunal Section you heard our IPO telephone welcome message and thought it was too harsh to listen to especially the Welsh language part. You asked if we could replace the message with something more melodic or softer. We rang you and explained that we would take your views on board when we next look to review the service.
You advised," US corporate visa credit cards do not work on this system. Only US visa credit cards owned by individuals." We replied, "I have been asked to look at your customer feedback received on the 6 December 2010 regarding 'US corporate visa credit cards do not work on this system. Only US visa credit cards owned by individuals'. I am unaware of any problems being reported to us regarding receiving credit card payments from the US generally, so it would appear to be a localised problem with your corporate card. Corporate credit cards can be restricted in the transactions that they will allow, so it is possible that your card is restricted for use with certain types of merchant categories or even possibly country restrictions. It may be worth investigating whether any such restrictions are in place. If this is not the case could you please let me know the exact type of card you hold. We have in the past experienced some issues with charge cards as opposed to credit cards. If you could provide me with some more detailed information I will look into this further. Your feedback is important to us and I appreciate you taking the time to raise this matter."
We advised you to refer to the IP Healthcheck tool as you were unsure which type of IP was appropriate for you. You then rang back to let us know that you found the term "industrial application" confusing and did not understand what it meant. You also stated that the reports did not print off properly. We forwarded on the comments to the senior manager responsible for this tool to investigate accordingly.
You advised, "I have seen on your website under "Intellectual Property Insurance" that you refer to patent or trade mark attorneys for advice on IP insurance. If you allow me, patent attorneys are often not familiar at all with IP insurance, whereas the insurance broking community specialised in IP Insurance is. May I therefore kindly ask that you refer to the specialised insurance broking community for advice with regards to IP insurance? We are one of the worlds' largest risk advisers and insurance brokers, has a dedicated team specialised in IP insurance. This team has regular contacts with the IP insurers with whom they place IP insurance on behalf of our clients. Many thanks for your kind understanding and best regards." On 30 November 2010 you responded, "Thank you for your kind mail. Most IP insurers only work with a broker, not direct, so the current wording could lead to confusion. I would not exclude the broking community as it is their role to look for the best - fit for purpose - insurance cover for their clients. Moreover, not all legal advisers/attorneys know about the different types of IP insurance. (My IP colleagues and I have been going on road shows to IP lawyers to raise their awareness about IP insurance). How about the below draft? "Intellectual Property Insurance. In the same way that you take out insurance on your physical property, such as your business premises, it is possible to take out insurance on your intellectual property (IP). IP insurance can help cover your legal costs should you need to take enforcement action. It can also act as a deterrent to potential infringers, can cover legal awards and even your own losses. There are a number of companies who offer specialist IP insurance. You could seek advice from your legal advisor / attorney to provide you with contact details, but the brokers that specialise in IP or have an IP insurance division should be placed best to help you out. Negotiating with an insurance company may mean disclosing your IP and you should consider the need for a non-disclosure or confidentiality agreement." I look forward to hearing from you." We replied, "Thank-you for taking time to give feedback on our IP insurance web page. I agree in reading this page the onus appears to be on attorneys to provide advice on areas they may be unfamiliar with and the page should be amended to reflect specialist IP insurance companies. I take your point too about attorneys not dealing with this however as some customers may not know where to find such brokers etc and us not being able to recommend any I was thinking of also amending to read - your legal advisor/attorney may be able to provide you with contact details. So the page would read something like: Intellectual Property Insurance In the same way that you take out insurance on your physical property, such as your business premises, it is possible to take out insurance on your intellectual property (IP). IP insurance can help cover your legal costs should you need to take enforcement action. It can also act as a deterrent to potential infringers. There are a number of companies who offer specialist IP insurance and you should seek advice from these companies (your legal advisor / attorney may be able to provide you with contact details). Negotiating with an insurance company may mean disclosing your IP and you should consider the need for a non-disclosure or confidentiality agreement. Would you agree this sounds better?" On 1 December 2010 we further replied, "Many thanks for helping the wording, it reads well now and I've made the IP insurance changes live.
You told us, "We received your kind letters advising us that our EP patent would expire if a renewal fee is not paid. It is very confusing to us that your country is not on your letter anywhere. We are not familiar with the various cities in your country, so please be sure to clarify that you are sending communications from the UK Patent Office. Thank you so much!" We replied, "Thank you for your feedback concerning our patent renewal reminder letter. Unfortunately the letter is currently being produced on the Intellectual Property Office's corporate letter headed paper and there are currently no plans to change this. We do however recognise the difficulty this could cause some of our overseas based customers and as such will include this issue in a review we are currently undertaking of our front line services. Your feedback is important to us and I appreciate you taking the time to raise this matter."
You had a 1 to 1 talk at the Newstart exhibition in Cardiff and stated that you "Had spoken to the office on the telephone who were very helpful but preferred to talk to someone face to face." No response required - feedback logged accordingly.
You informed us that our Information Centre telephone number is too hidden on our website. We rang you and, "Thanked you for your feedback but explained we have a drive through central Government guidance for more avoidable customer contact and to use our website as a main port of call etc. You were not too happy as thought it made sense to ring up but she understood."
You told us when getting into the building, there are actually 2 entrances and although a member of staff stood at the level/front entrance-the main entrance is round the corner. Your feedback was forwarded on to our marketing team for information purposes.
You told us, "Pleasant and helpful, but the goods were not delivered promptly as promised. This might not be the fault of the person whom I spoke to. I telephoned to request copies of information on IP that I could give to students at a careers convention. I originally requested leaflets more than two weeks before the event and was told they would be sent promptly by first class post. A week before the event nothing had arrived so I telephoned again and was told another batch would be sent promptly. The first requested leaflets turned up on Friday, the careers convention was yesterday (Tuesday) and the second batch of leaflets arrived today Wednesday 13 October." We responded, "With regards to your query concerning the delivery of information leaflets I have investigated and found the following. The original request was received via the Despatch Room labels on Tues 28 September 10 am. The request was for Patents Basic Facts x 20, Trademarks Basic Facts x 20, Designs Basic Facts x 20, Copyrights x 20, My IP and Innovation in your Business x 20. We dispatched the label request from stock as normal. All of the labels were cleared from the despatch room by Wednesday pm (29 September 10). The post room have no record of any parcel being delivered to you so it must have been delivered in the usual way i.e., dispatched in an envelope(s), within the 48 hour timescale. The second request for you was raised on 6 October 10. The request was for the same amount of literature and was dispatched on 8 October 10. It looks as though we delivered a box this time which was taken to the post room on Friday afternoon - 8 October 10. The post room has delivery confirmation of the parcel being delivered to you, on Mon 11 October 10. The post code and delivery details on all records match. I am sorry but I can offer no reason as to why it took so long to arrive with you. Please accept our apologies for the length of time the literature took to arrive and do not hesitate to let me know if you have any difficulties in the future." On the 5 November 2010 you replied to advise, "Thank you for looking into this for me. I raised the issue because I was assured that the information requested would be dispatched by first class post. I get you to send me this sort of thing every year, and it has always arrived well within a week in the past. When nothing arrived after a week I feared it had got lost in the post."
You indicated that you were looking for Copyright advice and our website was way down the list of sites. We explained that our official name was the IPO. You also said that this too was way down the list of websites. You also suggested that anyone using the copyright badge should have to register their website or postcode with us to use the Copyright symbol. We did not have any contact details for you so were unable to respond to you directly; however we did forward on your feedback to the relevant senior managers for their information purposes.
You told us where can funding come from. Seems to be a major sticking point for getting started. Your feedback was forwarded on to our marketing team for information purposes.
You told us, "Impression of advisor: Very good. There are some areas on your DF2A form that could be improved, such as the 0300 number, how do I know that it's not a premium number? Why should I pay for a stamp when it's your survey information that I am sending back. Not good." We responded, "0300 numbers are charged at the network providers standard national rate and we do also send out free post envelopes with our information packs for surveys."
You advised, "The presentations did not relate to the seminar topic "Creating brand value for your business" except for the time out presentation." Your feedback was forwarded on to our marketing team for information purposes.
You told us, "We should have a UK Intellectual Property Office in Leicester to save vital time regarding communication etc." We were unable to respond as you did not leave any contact details.
You said "I suggest you change your registers such that the registered numbers for limited companies and LLPs are shown. This will make it easier to determine who the registered proprietor is following a change of name. The Land Registry adopted this circa 15 years ago." We replied "Thank you for your feedback suggestion, please accept my apologies for the delay replying. Our registers do not currently contain company registration numbers because this information is not required for processing intellectual property rights. This means that we cannot require applicants to supply this information. You have however identified something that could potentially improve the service for our customers. Although I cannot give any firm commitments, we will investigate the benefits of your proposal to determine if it is something that we should consider further. Thank you again for taking the time to contact us."
You stated, "I thought the system was very good but thought there should be a box to indicate the application should be considered for the green channel." We replied, "Thank you for taking the trouble to send us your feedback about the patents web filing service. Please accept my apologies for taking so long to reply. I was really pleased to hear that you thought the service was very good. Your suggestion about providing a tick box to indicate that an application should be considered for the green channel is certainly one we will keep in mind when we next review the service. However, currently applicants are required to make a reasonable assertion in writing that the invention has some environmental benefit for it to be accepted for the green channel, so I am afraid that a tick box would not meet that requirement. For further details about the Green Channel please see our website. Thank you again for taking the time to contact us."
You told us about, "Suggestions for improvements in assisting inventors in achieving Patent protection" and a "Letter with attachments for demands for large sums of money by outside companies." We replied, "The first of these letters refers to various invoices for large sums of money. We are aware that a number of companies are contacting holders of IP rights with unsolicited mail and in this respect I can confirm that the documents you have set out as Refs 3, 4 and 5 are unrelated to the processing of your international patent application under the PCT. Ref 2 is the official World Intellectual Property Organization (WIPO) notification of publication (issued by Dorothée Mülhausen of the International Bureau of WIPO) and there is no fee associated with this stage of the patent application process. The Intellectual Property Office and WIPO’s websites both include notices warning customers of these types of requests for fees. For example, copies of invoices External Link you have received can be found on WIPO’s website. If you receive any further requests for money which are not included on this website then I would recommend that you draw them to the attention of WIPO. These companies are not linked to any patent-granting or Government institution and there is no obligation to pay them. The IPO is in contact with UK Trading Standards on this matter and if the company sending the invoice is based in the UK, we will forward a copy of the unsolicited mail to Trading Standards. For your additional information, the November 2010 issue of the PCT Newsletter included an article on this issue, which I’ve reproduced overleaf: Warning About Requests for Payment of Fees (Reminder) Further to the many warnings that have been published in the PCT Newsletter about invitations to PCT applicants and agents to pay fees that do not come from the International Bureau of WIPO and are unrelated to the processing of international applications under the PCT, new invitations have been identified originating from WIPD - World Intellectual Property Database (15 October 2010) and ITPD - International Trademarks & Patents Database (11 October 2010). To view examples of invitations External Link, as well as the many other examples which have been brought to the attention of WIPO by PCT users, and for further information on such requests in general, please see the WIPO website. PCT applicants and agents should note that it is the International Bureau of WIPO alone which publishes all PCT applications promptly after the expiration of 18 months from the priority date (see PCT Article 21(2)(a)); there is no separate fee for such international publication, and the legal effects of international publication are set out in PCT Article 29. If they have not already done so, PCT applicants and agents are advised to bring this information to the attention of the people responsible for handling payments of fees within their organizations, as well as to the attention of applicants and inventors who might also receive such requests. In case of doubt in relation to any such invitation, please do not hesitate to contact the International Bureau: Telephone: (41-22) 338 83 38 Fax: (41-22) 338 83 39 E-mail: PCT infoline You also mention concerns about publication of your international application on 21 October and the effect that this might have on your opportunity to respond to the search report. I can confirm that the two months available for you to provide a response to the search report remains available to you even after publication of the application. Publication of a patent application takes place as soon as possible after 18 months after the earliest priority date of the application, and is not governed by when the search report was issued. In addition to the opportunity to amend the claims within two months of the international search report, you will have later opportunities to amend the application: (a) during International Preliminary Examination (if you opt in to the optional International Preliminary Examination route under Chapter II) and (b) during the national/regional phase. Your second letter sets out various suggestions for improvements to the guidance provided about the patent application process. Thank you for these suggestions which we will consider and implement as appropriate. I have enclosed a copy of a booklet entitled "Patent Cooperation Treaty (PCT) for Private Applicants". Pages 12 and 13 of this booklet illustrate timelines for PCT applications, whilst pages 14 to 23 set out important PCT time limits and a summary of actions to be taken by the applicant on receipt of official communications. If you were not previously sent a copy of this booklet then I apologise. To ensure that applicants have an opportunity to request a copy of this booklet in the future, from now on we will advertise the availability of this booklet when we acknowledge receipt of all PCT applications filed at the UK Receiving Office by ‘private applicants’ (i.e. individuals who do not use a patent attorney to represent them). If you have any specific comments or suggestions about the contents of this booklet, please do not hesitate to contact me at the above address. You may also find the guidance available in the PCT Resources External Link area on the WIPO website and in particular the PCT applicant's guide to the International phase External Link to be helpful. Thank you also for your suggestion that our seminars include warnings about deadlines. We will bear this in mind for future patent seminars. In terms of what gets published, in general terms all patent applications are published in the form they were originally filed 18 months after the earliest priority date. At this point, all non-confidential correspondence in relation to the patent application becomes available for public inspection. Finally, I note that you find general suggestions to seek legal advice unhelpful. However, it remains the case that the international patent application process is very complex. We therefore advise applicants to seek the help of a patent attorney. Furthermore, the IPO is unable to offer specific legal advice relating to particular circumstances, as it’s important for the Office to remain impartial. Many applicants therefore find it beneficial to use a patent attorney to guide them through the patent application process."
You needed help with online form. No one available at 15:15. We forwarded on your comments to the senior manager.
You told us, "There is a notice that Patent Form 51 was updated on 5 October. Apart from some minor changes in layout, I can't spot the difference. It would be really helpful if you could point out the differences instead of leaving attorneys across the country to try to find them." We replied, "Thank you for your feedback regarding Patents Form 51. It was recently brought to our attention that the link to the "unlocked" Word version of Form 51 on the patents forms and fees page was in fact directing users to a locked version. The page was therefore updated to address this issue. I am sorry that the entry in the "What's new" section of our website was not clear in this respect and resulted in confusion. The entry has now been amended to reflect the true nature of the update. I would like to assure you that we will continue to give advance notice of any substantial changes to the forms by placing a notice in the Patents Journal."
You advised, "It would be nice to have an auto-fill feature (or learn). I file quite a few applications, and the tick box questions are annoying. The old fax form was great - I had a standard template - but I have to fill in online now, because my fax software won't work with Vista on my PC. Also, I'd like to file a Word(tm) document - otherwise I have to convert to pdf each time." We replied, "Thank you for your e mail about the patents web filing service. I am sorry that you find the tick boxes annoying and that we do not have an auto fill feature as part of the service. Although the web filing service does not include auto fill (or learn) features, we do offer an alternative electronic filing service (EOLF) which is based on the European Patent Office's software and this does enable you to save and re-use data on subsequent forms and applications. As you file quite a few applications you may wish to consider registering to use this service. For more details on EPO online services please visit our website. Both of our electronic filing services do require you to file documents in PDF format. This solution was chosen when the systems were designed because the software needed to generate PDF documents is freely and widely available and because it is often provided as an option in modern word processing packages. Thank you for taking the time to send us your feedback, I am sorry I cannot be more helpful, but when we next review these services we will take your suggestions into account."
This was a general comment/observation made during discussion of unrelated issues on this application. You suggested it would be very useful to expand our online services to include online 'Name Changes' and online 'Renewals'. We thought these interesting ideas to forward as feedback. You were not expecting any further action or communications on these ideas; they were merely 'wish list' ideas. We forwarded on your comments to the senior manager.
You couldn't find where on our website the breakdown of patent fees was. We explained on a different page from the pdf list of forms and guided you. You said that the fees shouldn't be mixed and that the £30 fee should be paid as a compulsory fee on applying for the patent. You then discussed the merits of paying the £30 and we explained that if a customer paid it they would get feedback on their application. You said that this was only a letter which tells you what you know already. You didn't think that the £30 should be paid with the search fee. Should be separate payments. We explained that this may be of benefit to private applicants. We have made a note of your comments and will take them into account when we next look to review the website.
You told us, "When I submitted additional documents during the online patent process they uploaded fine and a PDF icon was shown but did not appear in the summary? - I don't know if they were added or not?" We responded, "Thank you for your e mail about the patents web filing service. We have checked the filing you made and we are satisfied that we have received all the documents that were electronically filed. The service is not designed to display, on the summary screen, all documents that you are filing, but only those forms created and the specification documents. Any other documents can be seen by the customer during the upload process at Step 11 on a Form 1. Although, as I have said we are satisfied that your e filing was processed in full, we are grateful that you took the trouble to bring this to our attention and we will keep your comments in mind when we next get an opportunity to review the operation of the service."
You needed help with online patents filing at 15:19. You were told everyone available to help in the section had gone home for the day. We managed to get assistance from the IT Helpdesk for you and this information was forwarded to a senior manager.
You required a search to decide whether to file a divisional on an as-yet unsearched invention. Your customer has not confirmed the usefulness of the report they received or if they have made a decision as to what to do next. You chose the IPO due to reasonable cost and likely strong search, and the ability to get this on an as-yet unfiled application. Your office also uses the Danish PO for similar reasons. You were satisfied with the overall service she had received by the Search and Advisory Service. We established that no further action was required in light of the customer's comments.
You were unhappy about a company called 'Innovate' who asked for £485 for a search and when you requested this money back they initially refused and then credited the money back to your card. You believed that they are not completely honest. We responded, "Thank you for your letter received by fax on 9 November 2010. Our Chief Executive, Mr Alty has passed your letter on to me and asked that I address the issue you have outlined as it falls within my area of responsibility. Firstly may I say how delighted I am with your comments on the service you received from this Office, comments which I will certainly pass on to colleagues in our Information Centre? I am very sorry to hear of the trouble you have had with the search carried out by Innovate. In recent years there has been a substantial increase in the number of organizations offering services to the originators and developers of ideas, many of whom offer an excellent service. However, we have also witnessed an increasing false representation of intellectual property promotion services. To address this we have been working with the British Standard Institute to develop a standard: BS 8538: Specification for the provision of services relating to IPR. This standard is intended to provide a robust, yet adaptable process for the ethical provision of services to originators in order to make the evaluation and commercial advancement of their ideas more consistent. We hope the standard will be published next year. I appreciate that this would not have helped you at this time but please be assured that yours is a problem that we are aware of and one that we are trying to address."
You told us, "I found the way your website facilitates online filing a bona fide 'dog's dinner'. Upon selecting 'How to file documents with us' I was presented with *what appears to be* only a way of making requests. It was only be pure experimentation i.e. I chose, at random, one of the requests that I discovered that the system then provides a menu for 'filing documents'. I then attempted to file only to discover that documents filed must be in pdf format. It would be helpful if this information was clearly stated before the user attempts to file non-pdf documents." We replied, "Thank you for your e mail about the patents web filing service. I am sorry that you were unhappy with way in which we provide access to our online filing service. We do provide a number of alternative routes into the service and the route you chose via 'How to file documents with us' provides you with a number of options, including "Filing on line via our website". Clicking on that link takes you to a page which lists all of the Patents Forms you can file on line which are then linked to an introductory page giving further details about the service and recommending that new users read the guidance notes before proceeding. In the guidance notes we do try to make it clear that we require all electronically filed documents to be in PDF format. I appreciate that you have not found our web filing service easy to use on this occasion, but I hope you will continue to use it in future as it brings clear financial benefits by way of discounted fees. If you do decide to use the service again, I suggest that you click on the Online Services Tab on the IPO home page, follow the links and take the opportunity to read the guidance notes, and I hope you will find it much easier to use."
You asked, "Has your organisation ever considered the provision of an online payment system for patent renewals, and if not, why not (and if so why is this not an option on your web-site)? This would be of outstanding benefit to Patent holders." We replied, "Thank for your e mail asking about our web filing service and an online payment system for renewals. The patents renewal form is not currently available as an on-line option. However, if you file a substantial number of renewals at one time we do have an option to do this electronically, but not over the web. This may not be suitable for your circumstances, however, if you wish to discuss this option please contact us on 01633 814939. The Office is committed to developing an on-line renewals form to enable customers to renew all their Intellectual Property rights electronically. As this project is at concept/design phase I am unable to provide you with a date when it will be introduced."
You told us, "Online form 23/77 doesn't allow you to request copies from EP (GB) files. Please fix!" We replied, "Thank you for your e mail about the on line F23/77 service. We try to make clear in the guidance notes (professional section) that this on line service is restricted to, "published UK patents or patent applications". It is designed in this way because, since the change in practice governing translations, we do not generally open files for EP (UK) patents, those we do create are not held electronically and there is little demand for the IPO to supply copies of papers relating to EP (UK) cases. In view of the above we do not currently plan to extend this service to EP (UK) cases; however we will keep your suggestion in mind when we next have an opportunity to review the scope of this service."
You advised, "On the last two occasions, when filing patent applications online, the form 7 (inventors who are not applicants), would not allow me to select the "no form 7 required" option. Not a fatal problem, but another letter I might not have needed to write. In each case, the applicant was the sole inventor. Form 1 believes not!" We responded, "Thank you for your e mail about the patents web filing service. I am sorry you have had problems with completing details where the applicant is the sole inventor. We have tested our system to see if there are any software bugs and all appears to be OK. In addition, we have not had other customers raising this as an issue, so I hope the following will enable you to have more success indicating an applicant is the sole inventor the next time you use the system. At Step 2 of the process you should select the "Tick if applicant is also the inventor" box when adding an applicant as this will enable you to select the "No" button at Step 5 (Inventorship & derivation of rights). Then when you click "Next" it will take you direct to Step 6 (Priority claims), thus avoiding the 4 screens covering the form 7. (Should you ever forget to click either the "No" button at the beginning of Step 5 or select the "Tick if applicant is also the inventor" box at Step 2, we recommend that you use the "Previous" button to go back to either Step 2 or Step 5.)"
You mentioned in a letter to us about an invention promoter who had taken £8200 from you and you claim had defrauded a wide range of other inventors of similar amounts. We replied, "Thank you for your correspondence of 20 October 2010, I’m sorry to hear of your problems when using an invention promoter. Unfortunately, as you envisaged, the IPO is not the authority responsible for consumer protection issues. For further advice you may wish to contact your local authority Trading Standards External Link service, the details of which are available from their website. Another option is to contact the government advice service Consumer Direct External Link. Their regionally based telephone advisors can give practical advice. Their contact details are 08454 04 05 06. Although we cannot take action on individual cases, where it is clear there is an ongoing issue we will consider placing a warning notice on our website. Please see our current warning notice which gives an example and which contains some further sources of information that you may find useful. I’m grateful for you bringing this information to my attention. We closely monitor all of our customer feedback and will consider adding to our current warnings if problems with invention promoters persist. If you require any further information please do not hesitate to contact me."
You enquired about the benefits of the office providing a financial incentive to give up your rights on your intellectual property. We replied, "Thank you for your letter of 21 November to the Comptroller, in which you comment upon the giving up of rights which relate to patent applications. I have been asked to reply. In your letter, you refer to a patent application that you have recently withdrawn, and say that it is possible for you to give up your "rights to the information contained with the original application" but that you do not wish to do so. You go on to discuss whether a financial incentive should be offered to people who are willing to give up such rights. If you have recently withdrawn a patent application before publication, you will have received a standard letter confirming the withdrawal. In that letter, the following paragraphs appear: If your withdrawal letter states that the withdrawal was done "without leaving any rights outstanding" (or words to that effect), then you can disregard the following paragraphs. Unless you have explicitly given them up, some rights remain outstanding in the withdrawn application (in particular, the right to request correction of the withdrawal if it was done in error). Also, if you file a later application for the same subject matter, you can still claim priority from the withdrawn application. However, if you file a later application for the same subject matter and you want that later application itself to give rise to a priority right, then any "outstanding rights" on the withdrawn application must explicitly have been given up by the time the later application is filed. Also, the withdrawn application must not have been used as the basis for a priority claim in a later application. The outstanding rights referred to in these paragraphs are not the basic right to the information contained in the patent application. When an application is withdrawn before publication, that information remains confidential, and it is up to the patent applicant to decide whether to disclose that information to others, keep it confidential, or file a further patent application based upon that information. The point being made in the withdrawal confirmation letter about giving up outstanding rights is therefore not concerned with whether or not the applicant chooses to disclose the information in the withdrawn application. Instead, it is dealing with a fairly detailed point of patent law which concerns the claiming of priority. As you may know, it is possible to file a patent application in one country to secure a priority date, and then use that application as a basis for filing subsequent applications (for the same invention) in the same or other countries. These subsequent applications can then be treated as if they were filed on that original priority date. The conditions which must be satisfied in order to make a valid claim to priority are set out in the Paris Convention, an agreement between most countries worldwide. One of the conditions of the Paris Convention is that any subsequent applications must in general be filed within twelve months of the first application filed for a particular invention. However, in very limited circumstances you can withdraw that first application, and then file a second one and start the twelve month priority period afresh. This is only possible if the first application has not been published or used as a basis for claiming priority, and is withdrawn "without leaving any rights outstanding" which essentially means that it is completely wiped away as a possible patent application, and the original priority date is given up. Furthermore, this must have happened before the second application is filed. Only in these specific circumstances can the twelve-month priority period be restarted by the filing of a second application and it is that particular point with which the later paragraphs of the withdrawal confirmation letter are concerned. I hope this information has been of interest to you."
You told us, "I include my original request to your help desk, and the accompanying response. My question is: how rational is it to have a website where if there is a problem with the website, you must call a helpdesk? Does this helpdesk not have an email address? My feedback is: Below is my email conversation with your employee. I really would just like an answer to the original questions I sent, and/or the email address of people who can deal with this. Surely this is possible? Hi, I am attempting to submit a patent application but am having some trouble with the website. Step two requires company details, however I am just an individual. Does this mean I can use my personal information (i.e. that information supplied in part 1). In Section 5 I am presented with the question: "Is there an applicant who is not an inventor or an inventor who is not an applicant?" The answer to this is no, I am the applicant and inventor. However, I cannot select the "no" option: it is greyed out. Can you suggest how I should proceed? If I click yes and go onto the next section and then supply no information, would this affect my claim in the future in anyway? Thanks. Dear customer, Thank you for your enquiry. If you are experiencing problems with the on-line service, please call our Information Centre on 0300 300 2000 who will be happy to assist." We tried to contact you on the telephone on several occasions without success. We then e-mailed you directly asking you to give us a call so we could discuss it further.
You advised, "When asking for credit card details there is a box requesting account number. On my credit card there is my bank account number. Perhaps you could specify which account the box refers to!" We replied, "Thank you for your e mail about the patents web filing service and the reference to the service asking for a customer account number. Customers who pay fees to the IPO are automatically allocated an IPO customer account number which appears on the receipt. You do not have to input that account number to be able to file, but it helps us manage your financial transactions with this office if you do. We have had a number of customers seeking clarification about which account number to input, so we are reviewing the content of the pages associated with paying for web filings with the aim of making them clearer and easier to use. However, I am afraid that this will take some time, so I hope the explanation above will help you the next time you use this service."
Provided feedback on the Search and Advisory Service report he had received: The customer required a search to support a museum based research project into science and technology activity in the North East of England. The customer confirmed that the information is still being assessed so at present is unable to confirm if a decision is going to be made. The customer did not have any further comments to add with regards to the quality of the service SAS provided. The customer did however comment that the search and advisory staff were helpful and responded to all his enquiries promptly. The customer was satisfied with the overall service he had received. No response required as general observations about the SAS search were being made.
You told us, "During online application of Patents Form 9A, question 6 shows 'No' as answer in the generated pdf file even though 'Yes' was selected when filling in the form." We replied, "Thank you for your e mail about the patents web filing service. When you completed the on line patent application you selected the option to pay the application fee with the application. Your patents Form 1 shows that you answered "Yes" to the question (8), "Are you paying the application fee with this form?" This is why, when you chose to file a Form 9A with your application, the answer to Q6 on the Form 9A was automatically set by the system to "No". I hope this explains what happened when you filed your application and reassures you that the system is working correctly. Thank you again for taking the time to write to us about this."
You told us, "Online filing works very well, but it would be useful to be able to submit a complete application with drawings as a single pdf file, rather than having to submit the drawing separately." We replied: "Thank you for your e mail about the patents web filing service. I apologise for not having replied sooner. It is always pleasing to hear from customers who consider the service works very well and your suggestion about enabling a single PDF file to cover drawings as well as the other documents will be considered when we next update the service. In the meantime you may be interested in a brief explanation of why we designed the service to require a separate PDF file for drawings. As many of our customers also file at the European Patent Office (EPO) we decided that for consistency this part of our service would follow the way in which the EPO's e-filing service handled drawings, particularly as the EPO's customer consultation had indicated that many customers used specialist software to generate their drawings. We had similar feedback from our customers, so we took the decision to design the service to include a requirement for a separate file for drawings. Thank you again for taking the time to write to us, it is much appreciated."
The customer provided feedback on the Search and Advisory Search report: The customer confirmed that the information he had received helped him/client with the necessary information and helped them make a decision. The customer confirmed that normally a commercial search would involve an agreed ECLA search strategy before proceeding. The customer also commented that adhering to agreed deadline- the customer had indicated from the outset this was urgent. Instead of sending the report on time they received an invoice and was told once the invoice was paid that they would receive the report. The customer normally use commercial search provider and on this occasion was dissatisfied with the overall service he had received. We replied to the customer with the below email, "Thank you for your completed customer feedback form, which has been passed onto me to look at. I'm sorry that you were dissatisfied with the service that we provided, and I am writing to you to respond to the points that you raised. Firstly, I'm sorry if you misunderstood our payment policy. This policy states that new customers, especially those based overseas, should be expected to pay in advance of the search results being released, due to problems that we have had in the past with non-payment of fees. This was stated in our estimate letter dated 16 September 2010, and is also set out in paragraph 4 of the "Terms & Conditions" also provided with that letter. I appreciate that the search was urgent, and as a result of your complaint when we originally issued the invoice requesting payment, we broke this policy to send the results out to you as requested. We therefore look forward to receiving payment of this invoice shortly. Regarding your comment about an agreed ECLA search strategy, this would have been possible if you had requested it. We invite our customers to make contact with the examiner who will carry out the search, and I note that you made use of this option, the examiner managing to speak with you to discuss the search strategy, in particular how it should be focused. I hope that this conversation was fruitful so that you received a set of results that are of use to you and your client. Often the customer is not interested in using this facility at all, while other customers may choose to discuss the search strategy, either in brief or in detail. Since different customers have such a range of requirements, we do tend to take our steer from the customer in this regard. I hope that this e-mail may help to explain some of our actions and the way that we handle commercial search requests. However, do please feel free to contact me again if you have any further concerns that you wish to discuss. Our aim is to provide a high quality of service to our customers, and your feedback is useful to help us do this. The customer has not replied to date, no further action required."
You advised, "When the applicant is only a company, the system would not allow me to fill in the boxes relating to the contact person. Hence, at the end, the form was warning that no name or surname was available for the contact person, but even after going back to the forms in question, the portion of the forms related to the names would remain non-editable/completable." We replied, "Thank you for your e mail about the patents web filing service. I am sorry you had problems providing the personal contact details. We think the situation you described in your e mail occurs when a Legal Applicant i.e. a company name has been entered at step 2 and these details are used as the Address For Service (AFS) details at Step 3. In this situation at Step 3, the First Name & Last Name fields are disabled, so it's not possible to edit them. This is because the Company Name is being used as the Address For Service. When you get to Step 13, (the summary screen) warning messages are displayed with hyperlinks back to Step 3, asking you to enter a Contact First Name & Surname. When you click on these links you are returned to Step 3, but the contact First Name & Surname are disabled, so it is not possible to enter these details. This is because the AFS is the Company Name. Clearly, the warning messages and hyperlinks back to Step 3 are not appropriate in the situation outlined above because you are still not able to provide the information we have requested (and it is not necessary for you to do so in these circumstances). Although it is possible to ignore the Warning Messages and continue from Step 13, we have decided to stop these warning messages appearing in these circumstances and will make the required software changes as soon as we can. We are grateful to you for bringing this issue to our attention as we can take steps to change the service in order to make it easier to use in the future."
We replied, "Thank you for your e mail about the patents web filing service. I am sorry you had problems providing the personal contact details. We think the situation you described in your e mail occurs when a Legal Applicant i.e. a company name has been entered at step 2 and these details are used as the Address For Service (AFS) details at Step 3. In this situation at Step 3, the First Name & Last Name fields are disabled, so it's not possible to edit them. This is because the Company Name is being used as the Address For Service. When you get to Step 13, (the summary screen) warning messages are displayed with hyperlinks back to Step 3, asking you to enter a Contact First Name & Surname. When you click on these links you are returned to Step 3, but the contact First Name & Surname are disabled, so it is not possible to enter these details. This is because the AFS is the Company Name. Clearly, the warning messages and hyperlinks back to Step 3 are not appropriate in the situation outlined above because you are still not able to provide the information we have requested (and it is not necessary for you to do so in these circumstances). Although it is possible to ignore the Warning Messages and continue from Step 13, we have decided to stop these warning messages appearing in these circumstances and will make the required software changes as soon as we can. We are grateful to you for bringing this issue to our attention as we can take steps to change the service in order to make it easier to use in the future." We replied, "Thank you for your e mail about the patents web filing service, suggesting we accept Word documents as well as PDFs. The requirement to file documents as PDFs was chosen for both of our e-filing systems when they were designed because the software needed to generate PDF documents is freely and widely available and because it is often provided as a option in modern word processing packages. In addition, by insisting on PDF documents it helps us to ensure that we receive precisely the same documents that you filed; whereas with word processed documents there is an increased risk that they could be altered inadvertently when we receive and store them electronically. Thank you for taking the time to send us your feedback, I am sorry I cannot be more helpful, but when we next review these services we will take your suggestions into account." The customer responded to our reply to say "Thank you very much for your response. Indeed the situation you describe was exactly the issue I wanted to bring to your attention. Best regards and congratulations for a superb customer service."
You advised, "1) Would be better if you tell the applicant beforehand that 9A form is included in form 1. There is a list telling that applicant can fill in 9A online so that will confuse them when they cannot find electronic form 9A at all. 2) It is better if form 1 was separated to two forms, on for applicants who are filing on their own and another separated form for agencies and those who are filing on behalf of other applicants." We replied "Thank you for your feedback regarding our patents online filing pages. Regarding your first comment, we agree that it would be helpful if it was made clearer that Form 9A and other forms can be completed online at the same time as Form 1. We will take your suggestion into account when the web pages are next updated. Regarding your second comment, we do not think it would be practical to have separate online forms for private applicants and agents. We already aim to make the online forms as accessible as possible for private applicants, and the majority of information required by the online forms is required from both private applicants and agents, so there would not be much difference between the two forms if they were separated out. Therefore, it is considered that having separate forms could cause confusion."
You said "I wonder if you are planning to expand your online filing service to include the filing of registered design applications. It seems presently, if you do not reside near London or Newport, then you must fax file (hoping the drawings are reproduced sufficiently) or file by post which effectively loses a day from the filing date. Please also confirm whether I can file patent formal drawings online using the subsequently filed documents form." We replied, Thank you for your email of 14 October which has been passed to me on the designs examination team. Please accept my apologies for the delay in responding. At present we do not offer any form of electronic filing for designs other than fax filing, as you acknowledge. However, we are in the process of upgrading our trade marks systems and on completion of this, although we do not yet have definite plans in place, it is possible that our designs systems may be reviewed in the same way."
You had received unsolicited mail from IPA requesting £1280 and had now appointed a debt collection agency to collect this money from you. On the 11 November 2010 you further wrote, "Thank you for your reply. Please find attached the paperwork which was signed by one of our employees. As you will see by the appearance and the way they word the documentation, it is designed to make the end user (your customer) believe that they are in fact yourselves, the IPO. In a subsequent telephone conversation with their office I directly asked the question "Are you the government agency responsible for renewing the trademark to which they replied "yes". Therefore, they most definitely did pass off as you. It’s obvious that the IPA try and mislead businesses into believing they are the official agency - essentially it’s obvious to everyone that this is a big scam. You can see by looking at the way they design their logo and phrase the wording that they're playing on the fact that businesses haven't got the time to double and triple check things and a certain percentage will simply sign the paperwork. The attached contract includes a graphic of our logo which I can only assume has been lifted from your website together with details of our business name and address etc. They then proceed to send out unsolicited mail to your customers - surely this is wrong and should be stopped. The crazy thing about this is that you are the IPO, the organisation responsible for protecting trademarks and the intellectual property of businesses in the UK and they're passing off as you. A small business such as ours cannot afford to pay the £1300 they are demanding from us and we are constantly being chased by their debt collection agency (Moreton Smith). I would sincerely hope that there would be some kind of help and support from your office. Please call me at your convenience and we can discuss this further." We advised you that we would be unable to give any advice on this matter and that you should seek legal advice. We then issued a letter stating, "We are aware that companies and individuals are sending unsolicited mail to applicants for, and owners of, intellectual property rights. We have aimed at raising awareness, for example, through our website, that these companies are not linked to any Government or Community Institution and there is no obligation to pay the fee. We are also looking at other options open to us. You say in your email that the IPA “passed them off as the IPO. Would it be possible for you to give us more information about this conversation? If you are ever unsure about a communication you have received, please check with us before making any payments. However, in view of the position you have outlined, I am afraid that the only suggestion I can make is for you to consider obtaining legal advice in this matter. You may wish to obtain advice from one of the following: The Institute of Trade Mark Attorneys, 5th Floor, Outer Temple, 222-225 Strand, London, WC2R 1BA, tel: 020 7101 6090, E-mail ITMA The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London, WC2A 1DT, tel: 020 7405 9450, E-mail CIPA. Thank you for raising our awareness to this company. I hope this letter has clarified things further." On 18 November 2010 we responded, "I refer to our telephone conversation earlier today. As I mentioned, given the circumstances, you may wish to consider contacting a government service called Consumer Direct External Link who should be able to provide you with advice. Their telephone number is 08454 04 05 06 or, if you prefer, you can e-mail them via their website. I am grateful to you for the information you have provided about your telephone conversation with the company concerned which has been noted. I hope you find the above information useful."
You rang to complain that you have been trying to contact classification all week and have left messages, but had no response. You advised you cannot file your application without the advice. We referred this information to the relevant senior manager and managed to pass you through to the section in question.
You had received unsolicited mail from IPA requesting £1300. We advised you to disregard the notice and referred you to both our renewals section and Consumer Direct.
You had received unsolicited mail from Trade Mark Renewal Service requesting £760 and had now appointed a debt collection agency to collect this money from you. We asked you to send us this correspondence and spoke to you on the telephone. You were content that we are looking into these companies.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from Gaia Almanac requesting 1350 Euros. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from Trademark Renewal Service Ltd requesting £760. We replied, "Thank you for your recent communication regarding the above, we are very grateful that you have taken the time to contact us about the unsolicited mail you have received. We are aware that a number of companies are sending out Trade Mark/Patent renewal reminders, which are confusing and potentially misleading. We would always encourage you to speak to your attorney before responding to such demands. The IPO are currently working in conjunction with Trading Standards to eliminate any confusion these invoices may cause. We would hope that in the near future, these invoices make it clear that you are not obliged to pay their fees. We would also like to encourage you to report the instance to your local branch of Trading Standards, and in addition, to Consumer Direct's specialist Scambuster team External Link. Any communication from the IPO will always be headed with the official letter headed paper (as this letter is). If you are ever unsure about a communication you have received, please check with us before making any payments. Thank you for raising our awareness to this company. I hope this letter has clarified things further."
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice, referred you initially to our renewals section and then to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. Advised, "Thank you for your recent communication regarding the above, we are very grateful that you have taken the time to contact us about the unsolicited mail you have received. We are aware that a number of companies are sending out Trade Mark/Patent renewal reminders, which are confusing and potentially misleading. We would always encourage you to speak to your attorney before responding to such demands. The IPO are currently working in conjunction with Trading Standards to eliminate any confusion these invoices may cause. We would hope that in the near future, these invoices make it clear that you are not obliged to pay their fees. We would also like to encourage you to report the instance to your local branch of Trading Standards, and in addition, to Consumer Direct's specialist Scambuster team External Link. Any communication from the IPO will always be headed with the official letter headed paper (as this letter is). If you are ever unsure about a communication you have received, please check with us before making any payments. Thank you for raising our awareness to this company. I hope this letter has clarified things further."
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice, referred you initially to our renewals section and then to Consumer Direct.
You had received unsolicited mail from EIEC asking for £439.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £760.00. We advised you to disregard the notice and referred you to our renewals section.
You had received unsolicited mail from EIEC. We advised you to disregard the notice as it was apparent that EIEC had sent the wrong certificate to the wrong address regarding a different Trade Mark.
You had received unsolicited mail from EIEC asking for £479.00. We advised you to disregard the notice.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC asking for £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1200. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £570.00. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £400.00. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You advised you "Would like the details of an opponent on a trade mark application placed on the online register on our website just as they do at OHIM. This would save you having to keep telephoning the Registry when you want to find out who an opponent is. This would also aid you when it came to finding out earlier marks, etc for that opponent." We tried to contact you on the 18 November 10 but were unable to get hold of you. We left a message on your answer phone service but you did not come back to us to discuss this matter further. On 10 December 10 we rang you again and informed you, "Of our plans to provide more information on our website post TM10, in particular, opponent's details, which are not currently held electronically. You were happy that this is something we have already considered but commented that it would be ideal to be able to view an opposition file, including all correspondence, as this is a helpful tool which is currently available on the OHIM website. We explained that this has also been raised but is not a facility that we are looking to make available in the initial phases of TM10."
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You "Read our web page explaining the difference between Standard Application and Right Start four times. You said that this page is not clearly worded hence your call to Information Centre. You said that our Information Centre explanation was better than the webpage!" You were informed of our ongoing website project and that the wording on the pages mentioned are to be reviewed.
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to our Renewals section and then to Consumer Direct.
You had received unsolicited mail from Trade Mark Renewal Service requesting £760. We responded, "Thank you for your recent communication regarding the above, we are very grateful that you have taken the time to contact us about the unsolicited mail you have received. We are aware that a number of companies are sending out Trade Mark/Patent renewal reminders, which are confusing and potentially misleading. We would always encourage you to speak to your attorney before responding to such demands. The IPO are currently working in conjunction with Trading Standards to eliminate any confusion these invoices may cause. We would hope that in the near future, these invoices make it clear that you are not obliged to pay their fees. We would also like to encourage you to report the instance to your local branch of Trading Standards, and in addition, to Consumer Direct's specialist Scambuster team External Link. Any communication from the IPO will always be headed with the official letter headed paper (as this letter is). If you are ever unsure about a communication you have received, please check with us before making any payments. Thank you for raising our awareness to this company. I hope this letter has clarified things further.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You rang to advise you, "Need IT support having issues with the image converter. No one answering the phone; been trying all morning." We rang you to discuss and managed to convert the image for you so that you could successfully file the relevant Trade Mark the same day.
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to our Renewals section.
You had received unsolicited mail from IPA requesting £1280.00. We responded, "Thank you for your recent communication regarding the above, we are very grateful that you have taken the time to contact us about the unsolicited mail you have received. We are aware that a number of companies are sending out Trade Mark/Patent renewal reminders, which are confusing and potentially misleading. We would always encourage you to speak to your attorney before responding to such demands. The IPO are currently working in conjunction with Trading Standards to eliminate any confusion these invoices may cause. We would hope that in the near future, these invoices make it clear that you are not obliged to pay their fees. We would also like to encourage you to report the instance to your local branch of Trading Standards, and in addition, to Consumer Direct's specialist Scambuster team External Link. Any communication from the IPO will always be headed with the official letter headed paper (as this letter is). If you are ever unsure about a communication you have received, please check with us before making any payments. Thank you for raising our awareness to this company. I hope this letter has clarified things further."
You had received unsolicited mail from IPA requesting £1850.00. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75 x 9. We replied, "Thank you for your recent communication regarding the above company. We are aware that a number of companies are sending out Trade Mark/Patent renewal reminders, which are confusing and potentially misleading to customers. The IPO are currently working in conjunction with Trading Standards to eliminate any confusion these invoices may cause. We would hope that in the near future, these invoices make it clear that your clients are not obliged to pay the fees they are requesting. We advise all customers to contact their attorney before paying such fees; we also advise that any communication from the IPO will always be headed with the official letter headed paper (as this letter is). We would also like to encourage you to report the instance to your local branch of Trading Standards, and in addition, to Consumer Direct's specialist Scambuster team External Link. Thank you for raising our awareness to this company. I hope this letter has clarified things further."
You had received unsolicited mail from Trade Mark Renewal Service requesting £760.00. We advised you to disregard the notice and referred you to Consumer Direct.
Could not speak to anyone direct with an online tm3 problem. Had to email query through, was not happy with having to wait as wanted to put the application through asap. We forwarded your comments on to the relevant team for information purposes.
You advised, "Secondly, are you aware of an organisation called Intellectual Property Agency Ltd External Link who send out very "official-looking" forms saying a trademark is due to expire in 6 months and asking people to return the form with a signature etc in order to make sure it is renewed? In the small print it states the fee as £1280 for a maximum of 3 classes with an additional £220 per class. If people aren’t really careful to look at the small print, they will think it’s communication from your office and hey presto - big fee for nothing. Surely this can’t be legal in the proper sense of the word? Just wondered if there’s anything you can do to warn unsuspecting people about them." We replied, "Thank you for your recent e-mail and your compliment about our website. Regarding the Intellectual Property Agency Ltd, we have received several complaints about this organisation recently. We are seeking advice from our lawyers about the validity of the letters that this organisation issues and propose to take action based on the legal advice we receive. We are also speaking to trading standards officers to alert them to the situation so that they too can alert businesses about this type of mail. There is a warning notice on our website which we are considering moving to a more prominent position. We are also looking into how we (the IPO) can alert trade mark owners earlier about their renewals and the costs involved; receiving this information will enable our customers to make an informed choice about their options when renewing their trade marks."
You wanted to change a registered mark and add a class. Customer wanted to use the form TM3A to add a class and the TM25 to alter the mark. We explained the forms are not actually for that and explained she had to apply again. The customer was confused because the forms on our website are misleading. We explained what the forms were for and advised that we would pass your comments on to the relevant personnel.
You had received various unsolicited mail from ECTO SA, European Trademark Organisation SA for various amounts x6. We explained, "Thank you for your recent correspondence about the unsolicited invoices (and the copies you provided) which you have received about trade mark renewals. The IPO has received many complaints about this type of mail over the last few weeks and as a result we are consulting with our lawyers on the best way to deal with this situation. We are also discussing our concerns with trading standards officers. I shall be contacting you again in January, when I hope to have further information for you as a result of these discussions. If you have any further questions please get in touch with me via e-mail."
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to our renewals sections.
You had received unsolicited mail from IPA requesting £1300.00. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to Renewals.
You had received unsolicited mail from IPA requesting £1020.00. We advised you to disregard the notice and referred you to Consumer Direct.
You e-mailed to advise that you had received unsolicited mail from IPA. We responded, "Thank you for your recent phone call (13 December) to us regarding a trade mark renewal service letter from the Intellectual Property Agency (IPA). I can confirm that this organisation is not related to the Intellectual Property Office in any way. I would advise that you are under no obligation to take up the service being offered by the IPA. If you decide to renew your trade mark, the fee is £200 for one class of goods, plus £50 for each additional class. These fees can be paid directly to us. The Intellectual Property Office will send you a reminder about your renewal, and the form that needs to be completed, around three months before it is due. Any written communication from ourselves the will always be on the Intellectual Property Office's headed paper, or if we use e-mail, our e-mail address ipo.gov.uk which indicates that we are a government agency. If you are ever unsure about a communication you have received relating to your trade mark, please check with us before making any payments. We have received several complaints about the IPA and we are seeking legal advice about the type of literature that they issue to trade mark owners. I hope this e-mail has clarified the situation for you. If you require any further information please get in touch with me."
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280.00. We thanked the customer for alerting us of this unsolicited mail you had received from the Intellectual Property Agency (IPA) offering to renew your trade mark for a set fee. We confirmed that we have received several complaints about this organisation recently. We confirmed that the IPA has nothing to do with the Intellectual Property Office and that we are seeking legal advice on the unsolicited mail issue and will take action based on the advice we receive. We have posted a warning notice about this type of mail on our external website. Regarding your question of confidentiality, we confirmed that your trade mark details are a matter of public record as required by trade mark legislation. Applicants are made aware of this when the trade mark application form (TM3) is completed. Box 11 (name and address details) of the application comes with the following warning: "The name and address details entered above will appear permanently on our web site shortly after we receive the form. If the application is accepted following examination, it will be published in our Trade Marks Journal after which the name details will be fully searchable on the Internet by the use of standard search engines. If you wish, you can provide us with a different address, for example a solicitor's address or a PO Box number." We apologised for the delay in replying to you.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You felt that the advice we offer on the registrability of a trademark and if someone infringed it wasn’t enough and forced small companies to get advice from expensive attorneys. We rang you and discussed the various issues you had. You told us, "I was pleased to receive a response (contrary to my normal experience of organisations). My dilemma had been whether to apply for a word only mark or one with a logo element and I had wanted advice on this. But rather than seeking (and paying for) legal advice, I wanted you to provide this." We advised that we could not provide such advice (and the person who you originally spoke with was right not to do so) but we explained the principles underpinning absolute and relative grounds ie distinctiveness, similarity. We also advised that each application is examined by a TM Examiner and enquiry staff are in no position to comment on the acceptability of specific marks. We advised that if you do secure registration, the above principles are the type of issues the Court would take account of in any infringement action. It transpired that you have already applied for the logo version which is awaiting examination. We advised that the mark may be rejected (It is Travel Local with a slight get- up for transport services) but that is for the Examiner to decide and you should hear early in the new year if not before. In response to your concern that customers lose their fee if their mark is rejected, we explained that this was one of the issues that led to us to introduce the Right Start Service in October 2009. You were aware of the service but had opted for the discount option. You may mail me with details of how you thought the service we provided prior to your application fell short of what you had expected (we mentioned that a series application may have been worth thinking about in this particular instance but who you spoke to hadn't advised this). We advised that if you do so, we will discuss with the appropriate manager (presumably of the Information Centre)."
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from ECTO requesting £2780. We advised you to disregard the notice and referred you to Renewals.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. We replied, "Thank you for your letter dated the 12 December and enclosed subscription request to the European Institute Register for Economy and Commerce (EIEC). We are aware of this type of unsolicited mail that is being issued, although the small print on the invoice does explain what the invoice relates to ie inclusion in a register. We are seeking both legal advice, and speaking to trading standards to see if there is any action we can take to prevent further confusion for trade mark owners. We shall keep you informed of our progress with these discussions."
You had received unsolicited mail from EIEC requesting £479.75 We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75 We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75 We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from GAIA Almanach requesting 1350 Euros and from EIEC requesting £479.75. We replied, "Thank you for your e-mail of the 10 December and attached copy invoice from European Institute for Economy and Commerce (EIEC). Regarding your question about the EIEC invoice dated 29 October. This organisation regularly issues un-solicited mail to trade mark applicants with the purpose of securing entries into their register. Having an entry in the EIEC register is not compulsory, and has no bearing on the UK-IPO registration process; we are two separate organisations. We receive regular enquiries about this type of unsolicited literature and due to the volume of these enquiries we have a placed a notice on our website. For your ease I have copied the relevant paragraph from our notice below: Entries in unofficial publications or registers. Owners of UK patents, designs and trade marks are being invited to apply for entry in various publications and "registers" in return for a fee. These parties tend to make their offers in the form of invoices, which are usually issued after publication of the official application. There is no obligation to pay them. The only offices that are able to provide legal protection for patents, designs and trade marks in the UK are the Intellectual Property Office, the European Patent Office and the Community Trade Mark Office (more formally known as the Office for Harmonisation in the Internal Market - OHIM). I hope the above information is useful and I apologise for the delay in replying to you."
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from EIEC requesting £479.75. You also enquired about changing the wording that accompanies your Trade Mark. We replied, "With regards to your request that the specification of the application be amended. You should be aware that Section 39(2) prevents the Registry from widening the rights from those originally applied for. Your requested amendment would have the effect of widening your rights and also features goods that would not be classified within Class 41. To have protection for a wider range of goods and/or services you would need to submit a further application to the Registry. Below I provide an assessment of the terms that you have requested: Working to promote The Person-Centred Approach, founded by Dr Carl Rogers, in Britain This sort of detail is not required for classification purposes which require only a designation of the type of services that protection is required for. If this statement were included in an application, an examiner would suggest that it be removed. Quarterly magazine This term appears to refer to the goods of a magazine and as such would be classified in Class 16. If it is a magazine publishing service that you are providing, then such services are classified within Class 41. In either case, I cannot add these goods or services to the current application as this would widen your rights. Regional groups If this term featured in an application, the examiner would seek further information as to the nature of the service that is being provided. It seems to me that the service here would be along the lines of “organisation of groups for recreational and training purposes. Such services are classified within Class 41, however to include them in your current application would again mean that your rights would be widened. Having said this, these services are similar to those that you have applied for, e.g. training, conferences, development; meaning that if another party were to apply for a mark that is the same or very similar to your mark and for this type of service, the Registry would pick up on your mark and give you the opportunity to oppose the registration of that later mark. Bi-annual Conference that includes workshops, training, professional and personal development opportunities. I consider that each of these services is already covered by the specification that you have, which explicitly includes training and conference services and that workshops and development opportunities would be considered to be a part of the provision of such services, meaning again, that if a third party tried to register a similar mark to yours on these, the Registry would be informing you of this. I hope this explanation is of assistance to you, both as reassurance that the services that you have requested are either explicitly protected already or are closely aligned with those that you have protection for meaning that you will be informed of later applications for marks that are the same or very similar to yours. With regards to magazines, either as goods or a publishing service, this information should be of assistance if you decide to submit a further application to cover these. If you do need any assistance with a further application or would like to discuss this application further, please contact us. Regarding your question about the European Institute for Economy and Commerce (EIEC) invoice dated 30 October. This organisation regularly issues un-solicited mail to trade mark applicants with the purpose of securing entries into their register. Having an entry in the EIEC register is not compulsory, and has no bearing on the UK-IPO registration process; we are two separate organisations. We receive regular enquiries about this type of unsolicited literature and due to the volume of these enquiries we have a placed a notice on our website. For your ease I have copied the relevant paragraph from our notice below: Entries in unofficial publications or registers. Owners of UK patents, designs and trade marks are being invited to apply for entry in various publications and "registers" in return for a fee. These parties tend to make their offers in the form of invoices, which are usually issued after publication of the official application. There is no obligation to pay them. The only offices that are able to provide legal protection for patents, designs and trade marks in the UK are the Intellectual Property Office, the European Patent Office and the Community Trade Mark Office (more formally known as the Office for Harmonisation in the Internal Market - OHIM). I hope the above information is useful and I apologise for the delay in replying to you."
You had received unsolicited mail from EIEC requesting £479.75. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from GAIA Almanach requesting 1350 Euros. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to Consumer Direct.
You had received unsolicited mail from IPA requesting £1280.00. We advised you to disregard the notice and referred you to Consumer Direct.
Customer called with a number of queries and just wanted to pass on his comments about the quality of our design registration certificates. The customer felt that our certificates did not look authentic, they did not state who was issuing the certificate and he felt that all that would be required to rectify this is for us to list our address etc at the bottom of the certificate. These details are listed on all other paperwork from the Office so he felt it would just be a small change that would improve the quality of the certificates. The customer was thanked and advised that his feedback would be recorded for consideration.
You had received unsolicited mail from GAIA Almanach requesting 1350 Euros. Thank you for your e-mail dated 27 December to the Trademark Examination section about the letter you received from Gaia Almanach Ltd. As you realise the letter is a request for payment for entry into a journal. We are aware of several organisations that send this type of unsolicited mail to companies who have recently filed trade mark applications. The IPO has placed a notice on our website alerting our customers to several types of unsolicited mail. We are working with trading standards officers on this issue. If you wish to report this incident to your local trading standards office they can take action if it is causing widespread harm. If your Birmingham address is your main office then you can contact Birmingham trading standards by either phoning, Telephone: 0121 303 6031 between the hours of: 09:00 to 17:00 Monday to Thursday and 09:00 to 16:00 on Fridays, or E-mail Birmingham Trading Standards
If you have any further enquiries about this issue please get in touch with me. I apologise for the delay in replying to you."