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Picture that you’ve found an interesting product on Alibaba.com, or at the Canton Fair – only to find out the hard way that the product is actually infringing on an existing patent.
Given the potential consequences, you got to be sure before you order your next ODM product. However, it’s often hard to assess if a products design or function is protected by a patent, and to what extent.
Thus, we decided to ask an expert – John Goodhue, patent attorney at Goodhue, Coleman & Owens, P.C.
John, please introduce yourself and Goodhue, Coleman & Owens, P.C.
My name is John Goodhue, I am a patent attorney at Goodhue, Coleman & Owens, P.C. (“GCO”) in Clive, Iowa USA. GCO is an intellectual property boutique law firm helping clients protect their innovations and providing legal counsel to help avoid infringing the rights of others.
I also want to make clear that although I am providing valuable legal information, this should not be construed as legal advice.
Legal advice should only be provided to you by an appropriate attorney in the relevant jurisdiction after being apprised of the specific facts of your situation.
Say that I find a product on Alibaba.com. How do I know if it’s infringing on an existing design or utility patent?
Depending on the type and complexity of the product involved, this can be difficult to assess. A single product may potentially infringe multiple design patents and/or multiple utility patents. However, here is a process to help reduce infringement risks.
First, are you aware of similar products being offered from other manufacturers? If so, look at these products and any accompanying literature to see if they have any patent marking on them.
Examples might include:
“U.S. Patent No. #,###,###”,
Oftentimes if there are U.S. patents covering a product, the product is marked because there are certain legal benefits to do so. Also make a note of the names of the manufacturers of these products so that you can separately search for patents owned by the manufacturers.
Second, why are you drawn to this product? If it is because of specific functionality, then you should consider that there may be greater risk that a utility patent exists which is directed towards that functionality. If it is because of the appearance, then that may increase the risk that a design patent exists. Understanding why you are drawn to a product sometimes provides insight as to what about a product may be protected by a patent.
Third, what countries or regions would you import the product into?
Perhaps the product is covered by a U.S. Patent but there is no corresponding patent in Europe or Australia.
Fourth, how long has this type of product been around? Patents generally last for 20 years or less, so absent a special design or special functionality there would be less likelihood of a patent existing, the older the product is.
Answering the above questions will help you with your search.
I generally recommend that everyone search on their own first before having a professional search performed or having an attorney provide an opinion. The results you find may make it clear that you should select a different product.
There are various online tutorials for performing patent searching. A few things to keep in mind is that patent offices use classification systems.
If you can properly identify relevant classes, this can help your search go faster. Using classes reduces the likelihood of missing important patents because different people may use very different terminology to describe the same product.
If searching utility patents, one reasonable place to search is patents.google.com if it covers the countries you are interested in searching.
Assuming that other companies sell similar products on, for example, Amazon.com – can I assume that the product I import is not infringing on someone’s IP?
This is one consideration that may help reduce infringement risk. If various other companies sell similar products it generally indicates less infringement risk, especially if the other companies have been doing so for a long time.
However, this is not a guarantee that your similar product does not infringe, or that other companies are not infringing someone else’s rights.
What exactly can happen if I still import a product that’s infringing on others IP?
Consequences can vary based on country, but even just the allegations of infringement can impose huge costs on your business. In the U.S. you may be the target of a patent infringement lawsuit or may receive a cease and desist letter threatening a lawsuit.
You may find it less costly to voluntarily comply with these requests than hiring lawyers to attempt to fight in court and potentially lose big.
You may end up with an injunction against the importation of the product, seizure of the product, and a monetary judgement against you.
If selling on an ecommerce platform you may find that the intellectual property owner has filed a complaint against you which can result in your product being removed.
Is this also the case if design changes are made to the product?
It can be. A utility patent generally protects functionality of a product. If a utility patent claims core functionality of a product, and you copy that product with design changes and added functionality, you do not necessarily avoid infringement.
Even if you have a design that is different than that in a design patent, if there is sufficient similarity you could have an infringement issue.
How much should I expect to pay for a patent search?
The cost of patent searches can vary dramatically based on the jurisdictions being searched and the amount of analysis being provided.
It is also important to know there are different types of patent searches. To manage infringement risk, the type of search you would want is a freedom to operate (FTO) search. Note this is different from lower cost patentability searches.
The point of the search would be to identify patents within a particular jurisdiction which might be infringed.
If you are trying to manage risks, you likely would want more than just the freedom to operate (FTO) search, you would also want an attorney in the jurisdiction of interest to review the patents and tell you what exactly the risks are.
Often times, patent search firms are used to perform the search. The cost of the FTO search varies widely, but it is not uncommon for the search to be at least $3000 USD.
If you want a patent attorney to analyze the search results and provide an opinion, which is probably what you really want, then the additional cost may be $5000 to $10000 USD or more, depending on the number of search results and the complexity involved.
As mentioned before, you can perform searching on your own at least for screening purposes. Having performed this search may also be helpful in increasing the quality of any search or analysis performed.
If you find relevant references, you can provide them to your patent attorney and ask them to review those patents first to determine if there are issues before performing a search.
Having that information may also help a patent searcher perform their search more quickly.
How long does it normally take to do a patent search?
Turnaround time varies depending on if you are only getting a search from a patent search firm or are working with an attorney to have a FTO search and opinion completed.
I would estimate 2-4 weeks, however depending upon the complexity of the product it might be longer or shorter. Often times the search can be expedited for an added cost.
Do I receive a report, or other kind of deliverable, when the patent search is done?
Patent search firms will generally provide a report which includes the databases being searched, the classifications being searched, search terms and/or search strategies.
A list of patents or published patent applications is generally included, sometimes annotated or with a summary of why the particular patents or patent applications were selected.
For a FTO, you would receive an opinion letter from an attorney summarizing the patents or published patent applications of relevance and analysis of the patent claims (utility patents) or patented design identifying differences which indicate non-infringement.
Generally, if the opinion is that one or more patents would be infringed, the attorney would discuss with you and not issue a written opinion and perhaps there would be a discussion of the design changes that could be made which would avoid or reduce potential infringement issues.
Thank you John. How can our readers find out more about your services?
If you would like to learn more about our firm, please visit www.goodhue.com.
Co-founder of Asiaimportal (HK) Limited and based in Hong Kong. He has been quoted in and contributed to Bloomberg, SCMP, Alibaba Insights, Globalsources.com, China Chief Executive, Quartz Magazine and more.
Hey there, I’m Fredrik!
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