Dear All: In response to Peter Van Raalte's query a while back about Patent information and applicability outside the USA as reproduced below:
>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>> An associate tells me that by shipping a product internationally I waive the rights to a US patent. Can anyone tell me if this is true? ---------------------------------------------------------------------------- Peter Van Raalte | Email: [email protected] Compliance Engineer | V-Band Corporation | Phone: 914-789-5117 565 Taxter Road | Elmsford NY 10523 | FAX: 914-347-3432 --------------------------------------------------------------------------- WE OCCASIONALLY HAVE CAUSE TO USE PATENT AGENTS FOR OUR CLIENTS AND I THOUGHT THAT I WOULD PUT THIS QUERY TO OUR OWN PATENT AGENT HERE IN THE UK. I RECEIVED THE ATTACHED REPLY AND THOUGHT THAT TREG WOULD BE INTERESTED IN THE RESPONSE. DRINK THIS FREE INFORMATION SPARINGLY AS THEY NORMALLY CHARGE US A FORTUNE FOR SUCH GOLDEN WORDS!!!! PLEASE GET BACK TO ME IF YOU HAVE ANY QUERIES OR COMMENTS. RE: Patent info. Thanks for your message. If the problem is that a product covered by a US patent is being copied abroad, then the only possibility of patent infringement is when a patent exists in the country where the copy is being made, or the country in which the copy is sold. A patent is a right granted by the government of an individual state, and makes it possible for the patent holder (patentee) to take legal action against any person who makes, sells, or imports products covered by the patent in or into that state. A US patent cannot therefore have any effect on goods manufactured in, say, the UK, unless those goods are exported to the USA (i.e. to a territory where a patent exists). If the problem is that goods covered by a US patent are being copied abroad and then imported into the USA, the patentee has the opportunity to sue the importer for patent infringement. Patentee should consult a patent attorney in the USA immediately if this is the case. Delay can damage the patentee's case. If your correspondent is merely seeking to manufacture in the USA a product covered by someone else's US patent, and avoid infringement actions by shipping the product abroad, he is in for a terrible disappointment (and probably an infringement suit) when the patentee learns of his activities. Manufacture of the product in the USA will be an infringement of the patent, even if the product is not sold in the USA. Where a company considers its product to be commercially important, it is usual to apply for patent protection either in the countries where the product is likely to be made (or copied), OR in those countries where the product (or a copy of it) is likely to be sold. To achieve this, an initial patent application is made in the country of origin of the invention. Under the Paris convention, the patentee has ONE YEAR from the date of filing the initial application to file applications in other countries. Any publication of the invention during that year (for example offering it for sale) does not invalidate the later filed applications, as they clain priority from the initial application. I hope a little light is shed by the above. Unfortunately, my experience is that no matter how short the question is, the answer is always long when intellectual property is concerned! Regards Paul Topley Chartered Patent Attorney G F Redfern & Co Worthing England
