Expert: George H. Morgan, P.E., Patent Agent - 4/30/2011

Question
QUESTION: Dear George,
I own a small import company.  Recently I revcieve a letter from another company claiming I have imported and sold two items that are their patented items.  What is funny is that the manufacture we imported these items from is the same manufacter who makes these products for the company claiming the patent.  We were never told by the manufacture that these items are patended.  The company wants $2500 from us.  What should we do?  What happens if we refuse to pay?

Thank you
Alice

ANSWER: I would not pay it without more information, and then, only after talking to a patent attorney.
First, consider the following:
1. Ask the complaining company for their patent number so you can look into it.
2. Ask the manufacturer from which you import the product about it. If they have a license to make the product from the first company, ask them to advise the complainer that you bought it from them, the licensee, so they have no complaint.
3. The complainer may not know you are buying the product from their licensee.

Then, either let them sue you, to see how serious they are. Or, consult the patent attorney first.
It may be that the complainer is a fraud, i.e. a bogus complaint from an unknown source pretending to the the company with the patent. i.e. same or similar name, with a false address.

I strongly suspect a scam.

I hope this helps. This is not legal advice, as I am not qualified to dispense advise in tort matters, but it is what I myself would do.

Best wishes,

George H. Morgan
Professional Engineer
Registered Patent Agent
Web site: http://www.evansville.net/biz/patagent

---------- FOLLOW-UP ----------

QUESTION: They have showed proof that these are their patented items. Thus I have no choice but eliminating the possibility of thing being a scam.  I am hoping to simply blame everything on the Chinese manufacture.  We really had no idea that this is an patented item, and the manufacture, knowing they are patented items sold it to us any how.  So my question is: legally are we still violating the patent law if it's the Chinese manufacture's fault for selling them to us without telling us the truth?

Thank you

Alice

Answer
The law is that you need to have permission from the holder of a U.S. patent to make or sell their product here in the United States.
I suggest you try to cut a deal with them. They probably didn't patent the product in China, so they have no recourse against the manufacturer. Their only recourse is to go after the importers.

If you stop selling the product, after only two sales, it probably isn't worth their while to sue you. However, if you see a good market for it, they might want to work out a licensing arrangement.

Best wishes!
George H. Morgan