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[f1products]

Hi,

Please excuse my lack of knowledge on law and patents.

Basically we have been selling a log splitter for many years from our small company in the UK, we sell on ebay, our own online store and from our showroom.  To cut a long story short, last week a company emailed us that they had the design patent on the item we are selling and we could not sell any more. Ebay pulled our listings and threatened to close our account, as this is our bread and butter side of the business this would be catasrophic.

http://oami.europa.eu/RCDOnline/RequestManager  (search 001099444 )

Now I am no legal eagle and our small company can not afford a patent lawyer, but they applied for this last year and we have been selling this item for 3 years, infact there are many companies worldwide selling the same designed splitter and have been for many years.

Can they get away this and how do we appeal against the patent, we have a lot of stock we can not sell at the moment and to be honest jobs are at risk.

any help gratefully received.

Thanks in advance

Gary

[Wiscagent]

I'm surprised that E-bay would get in the middle of a patent dispute.  Did this company just send a letter to E-bay telling them to stop selling your product, or is there some sort of court order involved?

Question:  Does the company have an actual, granted UK patent, or is there only a published application?

Even if the company has a granted patent, the company does not necessarily have a valid claim against you.  Depending on the details of the case, it may be best to do nothing, to counter sue, to negotiate, to redesign the product, or to walk away from the business.  But without having an attorney review the case, there is no good way to suggest a course of action.

Perhaps you could hire an attorney for the very limited purpose of reviewing the e-mail and reviewing the patent, and explaining some of the options to you.

[JimIvey]

From what I understand, eBay makes no attempt to sort out the merits of IP claims but instead acquiesces to all requests to take down listings that might infringe another's IP.  I'm not even sure prevailing in court will help you.  It's just easier for eBay to quickly dodge any threats of legal trouble than to sort out the merits of each case.  And, I can't think of any legal basis to force eBay to accept your listings.

Sorry.  Wish I had something more promising to offer.  You may have to find alternative distribution channels.  I know that there really aren't any substitutes for eBay if it fits your need well.

Regards.

[DogDayPM 9er9er9er]

Hi,
...emailed us that they had the design patent on the item we are selling and we could not sell any more. Ebay pulled our listings and threatened to close our account, as this is our bread and butter side of the business this would be catasrophic.

Hasn't this company already caused you financial harm by interfering with your business (getting your listings pulled)?  You might consider spending the money to consult an attorney, at least to the extent suggested by poster Wiscagent. 

I don't know UK law, but if the facts are all as you indicate (re the date of the patent vs. how long your product's been publicly available), then one would think a company interfering in such a manner would be liable since more than a cursory review of your business would have revealed to them how long your product's been on the market.

[bartmans]

I'm also not familiar with UK law, but here are my 2 cents:

first of all, you mention it is a design patent (something that does not exist as such in Europe/UK, it is either a design registration or a patent) and you refer to the website of the OHIM.

Thus I suspect we are not talking about patents here, but about a design registration. There are different types of European design protections and an interesting article on designs in Europe can be found here: http://www.mondaq.com/article.asp?articleid=61252.
In general a valid European design right (I suppose this is what we are talking about here) can only be obtained if the design is new and has an "individual character." Novelty is defined in slightly different terms from many national statutes in that designs which differ in only immaterial details from a prior disclosure will not be regarded as being new. Individual character means that the overall impression of the design is such that "it produces on the informed user" a different overall impression from that of any prior design that has been made available to the public. OHIM officials have indicated that what is meant by an "informed user" is someone intermediate between an ordinary user and an expert. For some types of products it has been suggested that such a person might be a retailer of the product in question. In making a determination of overall impression "the degree of freedom of the designer in developing the design shall be taken into consideration.

From the above, and from the knowledge that your product was already on the market when your competitor filed for design protection, it can be concluded that either:
a) the registered design is not new over your design, and thus is invalid
b) the registered design is new over your design, but then your design will not be covered by the design right.

Thus, if it is true that your design was around before the date of filing of the competitior's design registration, then there will be no problem.

On the other hand, I know that in the UK it is very unwise to send threatening letters in IP cases, since such an act could cause liability. Maybe this gives an opening for you to file a counterclaim.

Nevertheless, I suppose you better spend a few quid in talking to an IP lawyer.
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