US patent infringement by UK business?
Hoping I can find some help from those in the know!!
My wife has recently started a business here in the UK customizing shoes (with crystals, bows etc). On Thursday she received a email from a UK based law firm acting on behalf of Sketchers US (the large shoe firm) stating that she was infringing on a patent they have licence to use (the patent starts usD57 etc etc and was granted in 2008 to a UK based person who has subsequently sold the licence to various shoe companies.)
The email states that they will give my wife until the 10th of March to stop selling the apparently infringing items and they will take no further action. The patent is very generic and amounts to gluing crystals on the toes of shoes which thousands of people seem to be doing on eBay, Facebook, twitter etc.
My general understanding and please correct me if I'm wrong is that the US seem to grant patents for pretty much anything and that they aren't enforceable in the UK??
The actual patent is so generic I can't believe that it has been granted, even in the US. All my wife's designs are her own etc.
My wife's company is literally making a few thousand a year if that, it's only just started up, maybe 10 or so pairs of shoes a week she does. It's a tiny business due to the fact the shoes take so long to customize and it's all down to the skill of the practitioner so it's not like the business is going to go multinational!!
We are obviously concerned that such a huge company have singled us out and are not sure what the next step is. My wife has worked damn hard to establish herself and get a following.
Can she be sued for selling her products in the UK and Europe? She has never sold in the US due to the hassle with shipping, customs etc. I have checked if there is a UK patent on gluing crystals to the toes of shoes but come up with nothing...my guess is that the original patent was rejected for the UK as it is too generic a design but was granted in the US.
Also I see that companies such as ASOS sell very similar items so can understand why they have singled my wife out??
Any advice much appreciated.......we are at a loss at the minute!
Mark
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If you were to put that email on a blog post of your company's website along with an explanation of what's happening, and even perhaps a video, how much publicity do you think you'd get? – Frenchie 12 years ago
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Sorry excuse my ignorance but I'm not sure I follow what you mean?? I'm not personally business minded...I have my own job/career that is public service based so all this is new to me!! I just don't want my wife to get in to trouble or lose her business if at all possible! – Mark Sacco 12 years ago
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This is not a good place to get that sort of legal advice, I would recommend if you are in any doubt contact a lawyer, your local chamber of commerce or the remnants of business link will be able to offer advice and access to a legal firm who may well offer free advice. – Tim Nash 12 years ago
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Thanks for the info Tim, wasn't sure if I would get anything from posing here but we only discovered the email last night so it's Sunday here and everywhere is closed....will hopefully sort something out tomorrow. – Mark Sacco 12 years ago
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"The actual patent is so generic I can't believe that it has been granted". Welcome to the wacky world of the U.S. Patent and Trademark Office, where "a method for thermal refreshment of bread" (AKA "toasting") is patentable! (http://www.google.com/patents/about/?id=IpwDAAAAEBAJ) – Chelonian 12 years ago
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What country (or countries) issued the patent? There is no possible answer without that information. – Gary E 12 years ago
3 Answers
A United States issued patent is enforceable only against those entities who are making, using and/or selling the invention in the United States or to anyone in the United States. As long as you do not sell a pair of shoes to anyone in or from the United States you should be fine.
This is not legal advice
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To be clear Mr. Gelfand--you say that an offer for sale is NOT infringement? How about importing? Inducing? 35 U.S.C. 271. – Yorick 12 years ago
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Offer for sale anywhere but the USA unless an international patent is held by the original patent holding company, or they have a patent in other countries, which therefore you would not be able to sell, import, or induce, the items there either. So say the hold a patent in China, you can not sell, induce, or import, to or from China. Nothing involving that shoe can go to or come from a country in which the patent holder owns a patent in. THIS IS NOT LEGAL ADVICE – None 12 years ago
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@Yorick you seem to know a lot about patents and legal looking at your answers. Why do you need to ask me? – None 12 years ago
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Just noticed the 35 U.S.C. 271 at the end of your sentence. So you see it explains exactly what I said. – None 12 years ago
If this is important to you and your wife, please consult a patent attorney in the jurisdiction where the patent is issued.
In the meantime, would it be possibe to stop the activities that the other party claims as allegedly infringing? At least until you have a chance to review the patent and get professional advice...
Last, your attorney will likely advise you and your wife not to make any public statements, such as on this forum.
Good luck.
infringing on a patent they have licence to use (the patent starts usD57 etc etc and was granted in 2008 to a UK based personA patent and a license are two different things. If there is no patent granted in the UK then you can sell the shoes in the UK with no problem (but not the USA). A license, I believe, only grants the right to sell the specific products made by the licensor, but only restricts selling products of similar designs if the patent was granted in the same country you are selling in.
Can you clarify the wording of the letter? Do you mean the patent was granted in the UK or just the license given to someone in the UK to sell goods that were patented in the USA?
You might have to read their wording carefully and see exactly what they are claiming. They may be trying it on with you (it wouldn't be the first time a law firm has done that) but I would not like to call their bluff without being certain of my case.
I would do two things: 1) check thoroughly the precise wording of the letter 2) contact a lawyer and/or the patent office for help finding out if the patent was actually granted in the UK. Any speculation on the matter besides this fact is worthless.
It may be of help to you, in any case, to get a lawyer to reply to them as, if they are trying to pull a fast one, they could still be able to afford to take you to court even if the case were thrown out - they may be hoping the fear and bother of a court case would just get you to stop. It may avoid any further unpleasant communications from them.
(Not a lawyer)
