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    Can an item with a US Utility patent be made and sold solely in the UK ?

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    Sir John , Earl of Bligeport & Sudspumpwater. MBE [ Motor Bike Engineer ] Nottingham England.




  • #2
    I believe US patents are covered by international agreements with participating countries. I don't think it really maters WHERE the product is manufactured or sold. If it did, Ford, GM and Chrysler wouldn't be moving all their production to other countries. Enforcement seems to be the bigest problem. Look what China did with the Buick and thousands of other products.

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    • #3
      A US patent is US law and only applies in the US. If it isn't patented in the UK you are in the clear. Don't try and sell to the US though.

      There aren't reciprocal patent agreements. An item must be patented in each country. However, there are reciprocal agreements with other countries that allow a patent in another country to be used to establish priority for the purpose of granting of a patent. If the item you are making comes under patent then you may be compelled to stop selling it. You won't be able to claim priority if it has already been patented in the US.
      Last edited by Evan; 09-16-2006, 08:44 PM.
      Free software for calculating bolt circles and similar: Click Here

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      • #4
        If you pantent something, be sure to put the pantent number on it. The company I work for found the Chinese selling a knockoff of one of our products for the aftermarket. The best we could get was as cease and desist. If the number had been on the part, we would have been on better legal ground for damages.
        Weston Bye - Author, The Mechatronist column, Digital Machinist magazine
        ~Practitioner of the Electromechanical Arts~

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        • #5
          Yes it can. It would have to be covered by a European (or UK) patent to prevent you doing this, and if the item is already in the public domain - which it must be as you know about it - then it cannot be patented over here.

          However, it may be possible for the original inventor to obtain an additional design patent which covers the ornamental design (form/shape) of the object rather than the way it functions. This is a slightly grey area as to retrospective application and may be worth checking.
          In this case you would need to make it look substantially different in order to avoid a passing-off action, and avoid any reference to the original item when marketing/comparing the item.

          The other thing to check is whether the original patent has been maintained. There are renewal fees which have to be paid annually to keep the patent in force, and if these are not paid it will lapse and then it is open season on making and selling the item.

          Peter

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          • #6
            Peter,

            Public knowledge and Public Domain are not the same thing. While I am not familiar with UK patent law ours is similar. After disclosure you have a set period of time in which to apply for a patent. In the US that is one year. I suspect it is similar in the UK as the US is originally a common law country as are we.

            If the patent is a recent one then it is possible for it to fall under protection if a UK patent is granted. It is also possible that it has already been applied for but not yet granted in the UK. It is also possible that a small revision might be made to the product and a new claim added to the US patent which then resets the clock while still protecting the original features. This is a common "trick" used in the US to extend the life of a patent.

            There is no annual fee required to maintain a grant of patent, only a fee if new claims are made that are not sufficient to warrant a separate patent.
            Free software for calculating bolt circles and similar: Click Here

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            • #7
              Being a bit too early here to do any shop work I looked up some relevant UK patent law. Specifically, the time period allowed from disclosure to application for a UK national patent.

              From the UK patent office:

              International patent application - entry to national phase

              If you have an international application that designated or elected the United Kingdom for a national patent you are advised to use form NP1 if you wish to enter the national phase. The form is not statutory and so you do not have to use it but it would assist the Patent Office in processing your application in the national phase. The time period for entry into the national phase is 31 months from the earliest date.
              The time allowed is quite generous, nearly three years.



              There are some significant differences in UK patent law that set it apart from US law which I was already aware of but bear stating.

              In the UK you cannot patent these items, unlike the US.
              An invention is not patentable if it is:
              • a discovery;
              • a scientific theory or mathematical method;
              • an aesthetic creation such as a literary, dramatic or artistic work;
              • a scheme or method for performing a mental act, playing a game or doing business;
              • the presentation of information, or a computer program.


              My favorite part though is this:

              An invention must be capable of being made or used in some kind of industry. This means that the invention must take the practical form of an apparatus or device, a product such as some new material or substance or an industrial process or method of operation.
              "Industry" is meant in its broadest sense as anything distinct from purely intellectual or aesthetic activity. It does not necessarily imply the use of a machine or the manufacture of an article. Agriculture is included.
              Articles or processes alleged to operate in a manner clearly contrary to well-established physical laws, such as perpetual motion machines, are regarded as not having industrial application.
              Nice way to exclude all the ridiculous patents for impossible machines.
              Free software for calculating bolt circles and similar: Click Here

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              • #8
                Evan, while there may not be an "annual" maintenance fee, there are periodic maintenance fees for the life of the patent.

                As far as I know if your patent is a US utility patent only, it can be made and sold elsewhere (I could be unaware of some wiggle room provided by UK cooperation with the US though).....so for example, folks can't produce a protected product in another country and then sell it in the US via websites like ebay or their own personal sites......but you could make it and sell it outside the US with no infringement problems.

                I'm no expert, I only know what pertains to my situation.

                John

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                • #9
                  Upon reading the appropriate sections I find that:

                  No fees apply after grant for the first five years.

                  After that there is an annual fee on a sliding scale up to 20 years maximum.

                  If not paid then the patent expires in six month from fee due date. However it may be restored up to 13 months after that. The fee is آ£135 to restore.

                  This is academic in John's situation since the "fee free" period is longer than the 31 months allowed for application for a national patent from an international application.

                  If John determines that the patent was granted more than 31 months ago in the US and it is not currently under application in the UK then he is free to manufacture and sell the item except in the US.
                  Free software for calculating bolt circles and similar: Click Here

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                  • #10
                    It's an old idea, one I though of many years ago but never did anything about it.
                    There are actually two patents, one is for a tool and the second is an attachment for it.

                    The first was taken out December 2004 and the second August 2006

                    My idea was an all in one tool that covers both these but my attachment is different, different enough to not come under the patent.

                    In fact I'm surprised he got it as it's been industry standard for many years as he's got it designed.

                    Doing a search on the UK and EU sites I can't find anything under the same title as the US one.

                    It's a very simple tool and has a retail value of around $350 in the US which keeps it out of many pockets.
                    I realise I can't sell in the US but I only propose to make a few to offset my costs as I want to make and use one.
                    I'm quite happy making and selling them for UK and EU use only.

                    I went into this patent lark some years ago and it's such as this that makes the system unusable unless you have a product that can generate enough sales to offset the costs.

                    I would feel guilty if I had just stumbled across this and ripped it off but my original notes date back to the early 90's plus my follower has bearings in it, his runs on the work like all the existing ones out there, as I say this part is prior.
                    The original 'tool' is that simple it can't be altered or improved on, in fact many of you will have the same tool with one slight difference on your lathe and these have been around since WWI.

                    [EDIT] Just found one of these in the US at a popular HSM supplier for $9.00 for the base tool which wouldn't take a lot to convert.

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                    Last edited by John Stevenson; 09-17-2006, 11:36 AM.
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                    Sir John , Earl of Bligeport & Sudspumpwater. MBE [ Motor Bike Engineer ] Nottingham England.



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                    • #11
                      Originally posted by CCWKen
                      I believe US patents are covered by international agreements with participating countries. I don't think it really maters WHERE the product is manufactured or sold.
                      No, US patents are worthless overseas. I have a substantial patent portfolio from my day job. When I file a new patent, the legal team has to decide whether to also file the patent internationally. It's a lot more expensive to file internationally, so corporations limit "Foreign Filing" to fundamental patents that would be worth pursuing in court.

                      Originally posted by Evan
                      There aren't reciprocal patent agreements. An item must be patented in each country.
                      No, you don't -- that's completely incorrect.

                      There's an international "Patent Cooperation Treaty" that consolidates foreign patent filings from all member countries (125 of the world's 193 countries, including all of the major industrialized nations) and provides reciprocal patent protection in all the member counties. It's pretty cool when your international patent filings come through -- you get a registered letter to your home address from the International Patent Office in Switzerland.

                      By the way, the filing deadlines (from the moment the IP was publicly disclosed) are different between the US and Overseas patents. In the US the patent "Bar Date" is 1 year from publicly disclosing the IP. Overseas, your lawyers can pay for 6 month extensions. So you can actually miss your own (US) filing deadline, and still file for an international patent. That would put you in the weird situation were your competitors could infringe in the US, but not outside the US.

                      If you're interested in the World Intellectual Property Organization and the Patent Cooperation Treaty, they have an excellent FAQ here:

                      http://www.wipo.int/pct/en/basic_fac...ut_the_pct.pdf
                      Last edited by lazlo; 09-17-2006, 01:57 PM.
                      "Twenty years from now you will be more disappointed by the things that you didn't do than by the ones you did."

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                      • #12
                        Evan you need to be careful on that one UK law is divided betweenScotland and England their laws are quite different Scottish law is based on the older French system although arguable more up to date and modern than the German systen the old Saxon law upon which English law comes from. so there is no such thing as uk law point of fact.Alistair
                        Last edited by Alistair Hosie; 09-17-2006, 01:23 PM.
                        Please excuse my typing as I have a form of parkinsons disease

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                        • #13
                          Alistair,
                          It doesn't apply to Scotland as we are talking about a tool costing $9.00.
                          The Scots are far too tight to spend that much.

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                          Sir John , Earl of Bligeport & Sudspumpwater. MBE [ Motor Bike Engineer ] Nottingham England.



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                          • #14
                            I was talking about the law as specified by Evan who obviously does not understand the situation properly and simply explaining that there is no such thing as uk law just as someone kept referring to the tiny island of England a while ago which does not exist and never has.Now your Lordship has got a full toilet wall you think you are the king of England
                            Please excuse my typing as I have a form of parkinsons disease

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                            • #15
                              Do you mean I've been promoted from Sir to King ?

                              Can't see that happening as big ears is upset as I keep calling anything with a protrusion Prince Charles,
                              Might even get demoted yet and made to mix with the riff raff.
                              Last edited by John Stevenson; 09-17-2006, 01:42 PM.
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                              Sir John , Earl of Bligeport & Sudspumpwater. MBE [ Motor Bike Engineer ] Nottingham England.



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