manufacturing of a possible patented design outside of USA?

What is the name of your state? CA

I am a sale person of a company based in China. Our company has been awarded with a contract to manufacture an easy open end for aluminum can with child proof tab mechanism. We are concerned about whether the child proof design is patented in US. So here is the two parts question:

1. The only possible patent holder is Sonoco packaging company. A USPTO search shows they have about 400 patents. I then search abstract, claims and spec by key words of “child” or “proof” but no relevant hit. I then relax the search to key word “easy” and but no relevant hit. Is my search thorough? Can I assume there is no such patent? If not what else I can do?

2. The worse case scenario. Let's assume if it is indeed patented in US, will our company be liable for patent infringement? Note Our company's role is limited to manufacture the product in China and sell to the distributor in US.

Thank you for your insight!

Kevin

Are these school assignments?

All three postings sound like homework questions.
https://forum.freeadvice.com/showthread.php?t=328836
https://forum.freeadvice.com/showthread.php?t=328837
https://forum.freeadvice.com/showthread.php?t=328838

1. The only possible patent holder is Sonoco packaging company. A USPTO search shows they have about 400 patents. I then search abstract, claims and spec by key words of “child” or “proof” but no relevant hit. I then relax the search to key word “easy” and but no relevant hit. Is my search thorough? Can I assume there is no such patent? If not what else I can do?

Click to expand...

Such a search is almost ceretainly insufficient, and it is very naive to assume that there can only be one possible patent holder. Further, even if Sonoco is the only one that would sue on such a patent, they may have purchased a patent from another inventor -- and a search on "Sonoco" would not reveal that patent.

Searching patents usually requires many, many tedious hours of reading patents -- you cannot rely on the patent titles. Probably the easiest way is to find a patent that is close to the patent you are worried about (or in the same field), and then search within that "class," and then amongst similar classes, then do a broad search over all classes.

2. The worse case scenario. Let's assume if it is indeed patented in US, will our company be liable for patent infringement? Note Our company's role is limited to manufacture the product in China and sell to the distributor in US.

Click to expand...

U.S. Patents are only enforceable within the U.S., so if you are in China, you cannot be sued for infringement. However, once your goods are shipped to the U.S., the patent holder could file a case in the U.S. ITC (International Trade Commission) to halt your imports at customs, and then you would end up in a fast-track patent infringement case in the ITC courts. The ITC might be limited in the types of money damages they can levy against you, but they can halt imports into the U.S. from your company, which could be very damaging.

If you were in the U.S. and doing this, it would clearly be infringment -- infringement is the sale, offer for sale, manufacture, distribution or use of a patented product or method without permission.

Thanks for the reply. I get the idea in general. Here is more specific points to follow up:

divgradcurl said:

Such a search is almost ceretainly insufficient, and it is very naive to assume that there can only be one possible patent holder. Further, even if Sonoco is the only one that would sue on such a patent, they may have purchased a patent from another inventor -- and a search on "Sonoco" would not reveal that patent.

Searching patents usually requires many, many tedious hours of reading patents -- you cannot rely on the patent titles. Probably the easiest way is to find a patent that is close to the patent you are worried about (or in the same field), and then search within that "class," and then amongst similar classes, then do a broad search over all classes.

Click to expand...

I also search very boardly, regardless the patent holder(Assignee). e.g. on USPTO site http://patft.uspto.gov/netahtml/PTO/search-adv.htm

I've done search on the following query

ttl/easy or end and
spec/child or proof

abst/easy or end or child or proof
etc.

I just run out of idea to do more query. I am familiar with the search process as I did extensive research for my own patent before.

U.S. Patents are only enforceable within the U.S., so if you are in China, you cannot be sued for infringement. However, once your goods are shipped to the U.S., the patent holder could file a case in the U.S. ITC (International Trade Commission) to halt your imports at customs, and then you would end up in a fast-track patent infringement case in the ITC courts. The ITC might be limited in the types of money damages they can levy against you, but they can halt imports into the U.S. from your company, which could be very damaging.

If you were in the U.S. and doing this, it would clearly be infringment -- infringement is the sale, offer for sale, manufacture, distribution or use of a patented product or method without permission.

Click to expand...

The situation is the US distributor is almost sure there is no patent and they want the product so much. It is us who are concerned of the potentail patent issues. If the US distributor is willing to put down a contract clause to remove us from any liability from any potential patent infringement, will the clause be any use? I heard they the clause will not protect us when 3rd party(the patent holder) is involved.

Thanks!

A contract clause like that will not protect you. You might be able to get the company to agree to indemnify you for any costs or losses, but that won't keep you from being dragged into the ITC for patent infringement, it will only allow you to (maybe) recover your costs after engaging in such a lawsuit.

Got it. Thanks for the advice.

re: kevin

Dear Kevin:

The initial judgement is same as US lawyer.

But, You manufactured in China in fact, so Just to be on the safe side and perclude be prosecuted in china, suggest to research Chinese patent and review you manufacture contract, export agreement.

Best Regards,

Dennis Zhang
Attorney at Law
Shanghai China

To divgradcurl

Dear divgradcurl:

I am very agree your analysis although I am stand in Chinese law.
But I donnot know wether there is contributory infringement in US laws.

Because it was manufatuered and was imported into US, if it would clearly be infringment, the manufacturer and the importer would be contributory infringement and take a risk together?

Thank you and wait for your reply.

Dennis Zhang
Attorney at Law
Shanghai China

Chinese Lawyer said:

Dear divgradcurl:

I am very agree your analysis although I am stand in Chinese law.
But I donnot know wether there is contributory infringement in US laws.

Because it was manufatuered and was imported into US, if it would clearly be infringment, the manufacturer and the importer would be contributory infringement and take a risk together?

Thank you and wait for your reply.

Dennis Zhang
Attorney at Law
Shanghai China

Click to expand...

Yes, U.S. patent law does recognize contributory infringement. See 17 U.S.C. 271(c). Manufacture or importation of an infringing product may result in contributory infringement under the above code section. However, unless the Chinese manufacturer has some presence in the U.S., it's hard to see how the U.S. courts would have any jurisdiction over the Chinese company in the first place. Certainly the International Trade Commission could halt imports at the border, but even if the ITC found that the imports were directly or contributorily infringing, the remedies they could enforce against a foreign corporation would likely be limited to seizure of the infringing goods, and perhaps limitations on the ability of that company to import future goods into the U.S. As noted by you above, U.S. patents are only enforceable in the U.S. -- the act of importing and infringing product into the U.S. is likely contributory infringement, but the manufacture of an infringing product wholly outside of the U.S. would not be infringing. The U.S. patent is simply not enforceable outside of the U.S.

Thank you for your reply

Dear divgradcurl:

Thank you for your reply.

I only want to say:
there is some legal risk for the client that he maybe be sued in China.
So check the manufacture contract and international trade contract and do a research for chinese IPO. it is more safety, would you? Just for reference.

Now trade and investment are cross the boundaries of one country, and the legal service is also too, would you?

Keep in touch!

Best Regards,

Dennis Zhang
Attorney at law
Shanghai China