Patent Data Breach. Yesterday (Aug. 15, 2024), the United States Patent & Trademark Office (USPTO) disclosed that unpublished patent applications wherein a an assignment was recorded between December 2, 2017 and August 1, 2024 exposed the following information to unauthorized users:
- Application title;
- Application number;
- Owner;
- Filing date; and
- Inventors.
Implications. The USPTO has indicated that such exposure will not implicate any statutory bars or constitute publication. However, the USPTO facilitates “bulk data” access to both patent and trademark data, usually for legitimate providers to conduct patent searching, analytics and train large language models.
Potential Criminal Scheme. It is likely this data will be used fraudulently. Inventors and applicants should anticipate contact by unknown individuals directly, perhaps posing as patent examiners or USPTO officials requesting issue fee payments. These might seem more legitimate as the criminal actor will know information that would otherwise only be accessible to an official USPTO employee. Patent applicants represented by counsel should inherently know direct solicitations are prima-facie fraudulent. However, for any pro se applicants, this will likely be a profitable criminal enterprise.
Trademark Data Breach
May 7, 2024 the USPTO disclosed that between August 23, 2023 and April 19, 2024 otherwise private applicant information was accessible and included the same type of bulk data downloads the USPTO provides for patents as well. Interestingly, the USPTO stated at the time “we have no reason to believe that your domicile information has been misused.” Nevertheless, by December 11, 2023 the fraudulent activity was so pervasive our office posted an article entitled “Next Level Trademark Scam” on LinkedIn detailing out the criminal activity and the modus operandi. We reported this scam to the USPTO reporting channel and they acknowledged January 2, 2024 that they “continue to see different variations of this particular scam.”
Typical Fraudulent Communication. Now that the data may include trademark owner emails and telephone numbers, the criminal actor may directly call or email the trademark registrant and falsely claim the trademark is not, in fact, registered at all. This has induced weekly, frantic calls to our office. We encourage our clients to recognize the following points:
- Direct solicitation of clients is usually prohibited by most (if not all) state bar organizations. Accordingly, the individual contacting the registrant is almost certainly not an attorney.
- Our office is listed as the attorney of record at the USPTO. Whomever is contacting the registrant is intentionally circumventing the point of contact for representation.
Prior Scams Continue
While these recently disclosed data breaches provide new opportunity for fraudulent activity, the public nature of trademark applications and granted patents continue to support the following decade-old scam solicitations:
- Trademark Renewals. Trademarks are renewed after the first five years of registration, and then again in another five years. Then in 10-year increments. The renewals cannot be done early so there is a “renewal window.” Fraudulent actors typically solicit trademark owners well-before the renewal window opens to preempt the scheduled correspondence from law firms. Many of the solicitations offer to put the mark on an “international registry of trademarks” which is non-sensical and has no legal value.
- Patent Maintenance. Similar to the trademark renewals, many patent owners receive official looking forms (even with the old tractor-feed printer holes) from the “Patent Office” in a non-Washington D.C. address for renewing the patent.
The public nature of the USPTO data very much automates these solicitations. These solicitations should be ignored and discarded if you are represented by counsel. If there is any question as to the legitimacy of a solicitation, contact our office.