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Help please
Posted by Anonymous . updated on 2/26/2009
I have been selling a particular item that I import from China, it is similar (but definitely not the same, as the description and diagrams in the European Patent files) as a product that has a European patent granted on it.
I am selling this product in the US, and have just received a email from the European patent holder informing me that I must stop selling this product or he will begin legal proceedings against me.
The European Patent was granted in April 2008, and I have been selling this similar items now since January 2006.
My question is........Does this European Patent holder have the legal right to tell me to stop selling this item here in the US?
Any advice would be appreciated........
I know the manufacturer in China holds no patents and I also wondered if I could patent the product here in the US if needed, to prevent this guy from hassling me further.
Thank you in advance
Answers (4)
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JimIvey
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Quote from: usangler on 08-01-08 at 04:30 pm My question is........Does this European Patent holder have the legal right to tell me to stop selling this item here in the US?
Any advice would be appreciated........
He has the right to tell you to stop (freedom of speech and all), but you have the right (without more than stated in the facts) to ignore him and go right on with business. EPO patents are not enforceable in the US.
I know the manufacturer in China holds no patents and I also wondered if I could patent the product here in the US if needed, to prevent this guy from hassling me further.
Thank you in advance
It would be improper for you to file a patent application for something you yourself did not invent. If the same guy doesn't already have a pending patent application in the US, there's a good chance he won't be able to get a US patent (depending upon how long the product's been sold in the US, when it was first described in a printed publication, when the EPO application was first published, etc.).
Regards.
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Mike B
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Quote from: usangler on 08-01-08 at 04:30 pm I have been selling a particular item that I import from China, it is similar (but definitely not the same, as the description and diagrams in the European Patent files) as a product that has a European patent granted on it.
I am selling this product in the US, and have just received a email from the European patent holder informing me that I must stop selling this product or he will begin legal proceedings against me.
The European Patent was granted in April 2008, and I have been selling this similar items now since January 2006.
My question is........Does this European Patent holder have the legal right to tell me to stop selling this item here in the US?
Patents are territorial, and so an EP patent is not enforceable in the USA. HOWEVER: patents can be filed in what we call "patent families", which are similar to each other, and which claim priority back to the same priority application. in many instances the claims will be the same or similar. The owner of this EP patent may have a US equivalent patent. Since they have not mentioned a US application, it seems unlikkely that this is so. You should write back to them and tell them that you are not selling your product in Europe.
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MYK
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As others have mentioned, if the European patent holder does not also have a U.S. patent (already issued, not merely an application), he's out of luck, at least until he gets a U.S. patent (assuming he has already filed an application which "claims benefit" to the European application). If he never gets a U.S. patent, then he has no case against you within the U.S., period. (If he currently only has an application, but eventually gets a patent, he may be able to sue you for reasonable royalties from the time his application was published until he gets an issued patent, but there are several conditions to that.)
You can search the U.S. patent application database to see whether the European patent has a corresponding U.S. application that claims benefit to it. A typical benefit statement is in U.S. 6788197 (the exact phrasing can vary, but it's always right at the beginning of the body of the patent or application). You might need to look for a U.S. application that claims benefit to the European patent or to the European application.
Read the "claims" section of the patent. The drawings don't really matter, what matters is what the patent claims cover. The drawings merely show one way to make the item. Read the claims broadly, and try to determine what each fragment of the claims mean (you will also have to read the description section to figure this out). If it says that the handle is connected to the lever, and if yours has a separate lever that is unconnected to the handle, then you're probably ok.
Assuming the worst case, that his patent claims apply to your item, and that he has (or gets) a U.S. patent:
Find out what the "filing date" was on the European application. Unfortunately for you, it usually takes between 3-5 years for a patent to be issued, so it is likely that his patent application was filed before you began selling your item. However, if he went through the "accelerated examination" process, he may have filed after you began selling your item. On the other hand, it might be an old product that you just began sourcing from the Chinese, long after they made it. If your item was designed before the European patent was filed, then your item obviously cannot infringe his patent. In fact, in that case, your item "anticipates" his patent application, and that makes his issued patent invalid.
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