If you have a patent in the United States and someone tries to sell your product in China what happens? What rights do you have as a patent holder? What qualifies as patent infringement and what can you do about it? All these questions and more are answered by Richard Gearhart of Gearhart Law.
Once you have gone through the process of having a patent application drafted, filed, and prosecuted with the Patent and Trademark Office and have gotten your patent allowed, (a process that takes about 3 years) what are your rights?
A patent gives you rights only in the country where the patent is issued. A patent issued in the United States gives the holder the sole right to exclude others from making, using, selling or offering for sale the invention in the United States. A patent in China will give certain rights in China, a European patent will give rights in those European countries in which you ratified the European patent.
Assume for simplicity that you have patented your invention in the United States only. What if a competitor manufactures your invention in China?
You can’t stop them from doing that, but you can stop them from importing and selling it in the United States.
What if a competitor makes it in China and sells it all over Asia and Europe?
You can’t stop them because you don’t have patents in those countries. If you are fairly certain that your invention will have markets outside the United States, or that you may engage a manufacturer outside this country to make your invention, you may want to consider filing patent applications outside the United States.
What if a competitor decides to start making or selling your invention in the US?
That is something you can take action on.The first step may be to have an attorney write a ‘cease and desist’ letter to notify the infringing party. If that doesn’t work, you may want to grant a license to your competitor and take a part of his profits. You can consider a non-exclusive license, for example granting only a right to manufacture or sell the invention in certain a geographical area or for certain period of time. You can reserve a right for yourself to sell and manufacture your product and grant licenses to other parties too. The options are many and it is a question of negotiation to nail down the limits of the license.
What if you don’t want anyone else to sell your invention?
Then you may have to sue your competitor for infringement of your patent.
Does that work?
If your patent is well written your chances are better. Remember way back in the last century (millennium, really) before we had digital cameras, we had to take photos on film and take the film to a photo developer so we could get prints? In the early 1960s, an invention that Polaroid had been working on since the 1940s finally paid off. Polaroid invented a consumer-friendly instant camera, which had a special film that let you spit out a print right after you took the picture! (After you waited a couple of minutes for the photo developing chemicals to work, that is). They kept improving the instant camera and devoted a lot of resources and research into this area of consumer photography.
Well, Kodak thought this was a great idea too, so they developed and sold their own instant camera with their own film starting in the 1970s. Polaroid didn’t like Kodak stealing their idea or their market share, so they sued for infringement, and, on September 13, 1985, Polaroid won a huge victory in Federal Court. The judge ruled that Kodak had violated Polaroid’s patents for instant photography. Kodak had to quit making the cameras and film. If you owned a Kodak instant camera, you could no longer buy the film, which was a big disappointment to the consumers who had bought a Kodak camera.
Suing an infringer in Federal Court is expensive and time consuming and no one really wants to do that. Therefore, make sure that your patent is well drafted, and that it covers your invention. Plan strategies with your attorney when it comes to filing outside the United States. And finally, if it makes business sense for you, turn infringement to your benefit: you can grant a license. Consider making your competitor into your ally.