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Avoiding Patent Infringement with Imports from China!

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Small

Junior Member
What is the name of your state (only U.S. law)? MA

Hi guys,

Thank you for your time. Please help me understand how I can make certain that the products I plan to import from China and sell here in the States do not infringe on anyone’s patent?

Specifically, these products are generic Replacement Toothbrush Heads (RTH) for Electric Toothbrush Handles (ETH) made by P&G Oral-B and Philips Sonicare. I would, for example, be selling the Philips Sonicare e-Series (HX7001) RTH but rather than branding it as a Philips product, would instead maintain a unique branding (i.e. HappyTeeth) for the product.

There are already dozens of such sellers on Amazon doing exactly this. I would imagine if this were a serious problem either P&G or Philips or Amazon would come down hard and close all these generic brands down. However, this hasn't happened.

Yet one can never be too sure. I would love to get some advice from someone who has experience in this area.

Thanks so much,

Isaac
 


quincy

Senior Member
What is the name of your state (only U.S. law)? MA

Hi guys,

Thank you for your time. Please help me understand how I can make certain that the products I plan to import from China and sell here in the States do not infringe on anyone’s patent?

Specifically, these products are generic Replacement Toothbrush Heads (RTH) for Electric Toothbrush Handles (ETH) made by P&G Oral-B and Philips Sonicare. I would, for example, be selling the Philips Sonicare e-Series (HX7001) RTH but rather than branding it as a Philips product, would instead maintain a unique branding (i.e. HappyTeeth) for the product.

There are already dozens of such sellers on Amazon doing exactly this. I would imagine if this were a serious problem either P&G or Philips or Amazon would come down hard and close all these generic brands down. However, this hasn't happened.

Yet one can never be too sure. I would love to get some advice from someone who has experience in this area.

Thanks so much,

Isaac
First, never base your idea of what is legal on what others are doing. Others may have obtained a license, or they may have been sued, or they may be sued in the future.

There are a few ways the Chinese product could infringe on the rights of the patent holders. To determine if the product infringes, there will be a comparison of the Chinese product elements to the elements in the patent claims. Infringement can be found when the elements are the same or if the products are sufficiently equivalent in what they do and how they do it. There can also be infringement when the claims are the same but the products are dissimilar in what they do and how they do it (negative doctrine of equivalents).

What is required to determine if the Chinese product you hope to market infringes on existing patents is a personal review and comparison of the products. We cannot do personal reviews and comparisons on this forum so I recommend you seek out an IP attorney in your area, this before investing too much money in the Chinese toothbrush heads and handles.

Good luck.
 

Small

Junior Member
Hey Quincy, I think we're on the same page in terms of how to approach all this.

The challenge, however, is that I have no specifications for these OEM products made by the Chinese factories. All I have are the finished products (samples) by themselves. Given this situation, how could an IP attorney do a proper personal review and comparison of the elements if they do not have access to all of the documentation?
 

quincy

Senior Member
Hey Quincy, I think we're on the same page in terms of how to approach all this.

The challenge, however, is that I have no specifications for these OEM products made by the Chinese factories. All I have are the finished products (samples) by themselves. Given this situation, how could an IP attorney do a proper personal review and comparison of the elements if they do not have access to all of the documentation?
Where did you hear about these Chinese products?

The IP attorney will take a look at the samples and review the manufacturer's history, for a start. That is often telling.

The International Trade Commission seems to sue Chinese companies with some frequency, for shipping infringing goods into the US and for encouraging others to import infringing goods into the US. Many goods from China are seized at the borders and never make it to those who have paid for the goods.

If your Chinese supplier ships infringing goods into the US and is consequently sued by the ITC, your supply of products to sell will no doubt dry up rapidly. The company you are doing business with in China will probably be excluded from continuing to ship their products into the US.

I know you are considering starting a new business. I think you may need to re-think your business plans, however, so your business does not have an early and potentially costly demise. Good luck.
 

Small

Junior Member
Thanks for the recommendations, Quincy. These products are listed on Alibaba, Made-in-China, Global Sources, and other similar international sites. Often times these factories do business via a Trade Company that's registered in Hong Kong. So even if the ITC did exclude the Trade Company, the Factory could always register another (new) Trade Company to take its place.

I'll get in touch with an IP attorney per your recommendation. Do you think finding an IP attorney who's versed in Mandarin is important given that they would need to review the manufacturer's history?
 

quincy

Senior Member
Thanks for the recommendations, Quincy. These products are listed on Alibaba, Made-in-China, Global Sources, and other similar international sites. Often times these factories do business via a Trade Company that's registered in Hong Kong. So even if the ITC did exclude the Trade Company, the Factory could always register another (new) Trade Company to take its place.

I'll get in touch with an IP attorney per your recommendation. Do you think finding an IP attorney who's versed in Mandarin is important given that they would need to review the manufacturer's history?
No. I don't think Mandarin is a requirement for your purposes. :)

As an additional note: If you are found to be intentionally infringing, it is not only the Chinese company that faces legal trouble. You could not only face a loss of all of the products you have on hand, you could have to pay up to three times the amount of any profits you have realized and be responsible for paying for the patent holder's attorney. As I said earlier, it can be a new-business ender.
 

FlyingRon

Senior Member
And even if unintentionally infringing, he could lose all the inventory that's infringing. Often it gets interdicted at the border.
 

quincy

Senior Member
Following are the infringement laws.

Here is a link to 35 US Code section 271, Infringement of Patent: https://www.law.cornell.edu/uscode/text/35/271

Here is a link to 19 US Code section 1337, Unfair practices in import trade: https://www.law.cornell.edu/uscode/text/19/1337

Not all Chinese companies are problematic, of course, but goods imported into the US from China are given extra scrutiny because of widespread infringement in that country (to mention only one area of legal concern with Chinese goods - there are others). Solid research into a foreign company is needed, therefore, before investing money in goods intended for import and sale in the US.
 
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Small

Junior Member
Hey guys, thanks so much for the feedback and the links.

I'll be getting in touch with an IP attorney this coming week. Hopefully, the infringement analysis will not be costly and will result in an outcome favorable to pursuing this business venture. Given such a result, would it make sense to get a formal written opinion from the attorney that says my company is “not infringing on a patent?” I'm thinking this can help avoid added damages if the nightmare scenario were to occur.

Also, perhaps this question is beyond the scope of a reasonable estimate given what little information we have here on the forum, but what are generally the costs for such an analysis? Would I be looking at a thousand or tens of thousands of dollars? Thanks again :)
 

quincy

Senior Member
Hey guys, thanks so much for the feedback and the links.

I'll be getting in touch with an IP attorney this coming week. Hopefully, the infringement analysis will not be costly and will result in an outcome favorable to pursuing this business venture. Given such a result, would it make sense to get a formal written opinion from the attorney that says my company is “not infringing on a patent?” I'm thinking this can help avoid added damages if the nightmare scenario were to occur.

Also, perhaps this question is beyond the scope of a reasonable estimate given what little information we have here on the forum, but what are generally the costs for such an analysis? Would I be looking at a thousand or tens of thousands of dollars? Thanks again :)
I think you are smart to consult with an IP attorney in your area for an analysis.

The cost to see the attorney may seem high (call to compare fees of several attorneys) but the cost to invest in goods that you find you cannot sell, and that could result in a lawsuit and you turning over your inventory and all profits (+), stands to be much higher.

Attorney fees vary by area and attorney - with Massachusetts home to not the most expensive IP attorneys in the country (on average), but it is also not home to those charging the least (on average), either. I do not see that you will be spending "tens of thousands" for what you want done, whatever the case. You should tell the attorneys you speak to/interview what you want and they can probably give you a pretty good estimate of cost.

I think you are starting off the development of your new business in exactly the right way. By looking into the legalities involved and managing these first is how all businesses should begin, rather than looking into the legalities after faced with a legal problem or lawsuit that could have been prevented with some pre-planning.

Good luck, Small. And thanks for the thanks. Both FlyingRon and I appreciate them.
 

Small

Junior Member
Thanks Quincy. It's nice to hear I'm approaching this the right way from the beginning :)

I'll return to this forum if any more questions come up. Take care guys!
 

quincy

Senior Member
Thanks Quincy. It's nice to hear I'm approaching this the right way from the beginning :)

I'll return to this forum if any more questions come up. Take care guys!
It would be nice to hear how everything goes for you, Small. Good luck.
 

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