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[morethanthat]

Hello, (Hypothetical)

Suppose I am granted a patent in the United States for something totally new and novel, and I don't file the patent in another country. About 1 year after my patent is filed, I noticed that some products from China have used my invention and are importing their product into the United States. How will my patent be enforced? Will the Chinese company be liable to me for payments?

RG

[CriterionD]

The Chinese company probably isn't infringing (unless you also hold a patent in China) but is definitely contributing to infringement, and can be sued (and found guilty of induced or contributory infringement or something like that).  That said I am not sure how easy or tough that might be to pull off. 

You can also go after other infringing parties, or other parties which are assisting infringement.  These would include wholesalers, retailers, theoretically shipping companies like FedEx/UPS I think (although I am not personally aware of any cases that have been filed against either company in a similar situation).

In summary, you are protected.  No, its not as easy and clearcut as you might want it to be.  But there is no reason to get paranoid.

Of course, if its only been a year since your patent application has been filed, you probably don't yet have an issued patent or even a published application.  But that's another subject.

 

[MYK]

The Chinese company probably isn't infringing (unless you also hold a patent in China) but is definitely contributing to infringement, and can be sued (and found guilty of induced or contributory infringement or something like that).  That said I am not sure how easy or tough that might be to pull off.

Note however that if the only issued patent is in the U.S., the Chinese company could legally manufacture the product and sell it in Canada, Mexico, all of Europe, Asia, Africa, South America, Australia, and the miscellaneous island, archipelago, and chelonian nations.  The patent only covers manufacture, sale, and use within the U.S.

You can also go after other infringing parties ... theoretically shipping companies like FedEx/UPS I think (although I am not personally aware of any cases that have been filed against either company in a similar situation).

Common carriers.  Arguably no liability unless there are some very exceptional circumstances, such as perhaps their knowing that they were shipping infringing goods and willfully refusing to stop.  Even then, it would be difficult, if the customer were shipping other, legal, goods through them as well, since they probably would not know the contents of any specific package.

[klaviernista]

Hello, (Hypothetical)

Suppose I am granted a patent in the United States for something totally new and novel, and I don't file the patent in another country. About 1 year after my patent is filed, I noticed that some products from China have used my invention and are importing their product into the United States. How will my patent be enforced? Will the Chinese company be liable to me for payments?

RG

A U.S. patent gives the patentee the exclusive right to make, use, sell, offer for sale, or import the claimed invention in the United States.  Thus, if a Chinese company is manufacturing a product covered by your patent, and is itself importing the product into the U.S., then they are infringing the patent (specifically, they are infringing your exclusive right to import the product into the U.S.).  You could sue the company for infringement, but enforcement of damages becomes a problem because the company may be unwilling to submit to a judgment of a U.S. court (though the International Shoe and Asahi decisions would allow U.S. courts to assert personal jurisdiction).  As an alternative to seeking damages, you could sue the company and ask the court for an emergency TRO/injunction to bar the importation of the infringing product into the U.S.  This happens more often than you might think, and the TRO/injunction is enforced by the U.S. customs service.

[klaviernista]

The patent only covers manufacture, sale, and use within the U.S.

Au Contrare, mon friere.  As specified in 35 U.S.C. 271(a): "Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."

[merkaba22]

Hello, (Hypothetical)

Suppose I am granted a patent in the United States for something totally new and novel, and I don't file the patent in another country. About 1 year after my patent is filed, I noticed that some products from China have used my invention and are importing their product into the United States. How will my patent be enforced? Will the Chinese company be liable to me for payments?

RG

You can file a compalint with the US International Trade Commission, they can find infringement, issue sanctions, etc. -- it cost little and is an expedited procedure.

[MYK]

The patent only covers manufacture, sale, and use within the U.S.

Au Contrare, mon friere.  As specified in 35 U.S.C. 271(a): "Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."

Sorry, I should have made that explicit, although "sale, and use" should cover it.