Allen Zhou | Apr 29, 2022

I had a really nice discussion on one hypothetical case with a university professor of IP the other day, which was indeed enlightening and informative. Can't share it all in this post, but still want to share some info here. Hope you will find it interesting to read.

Company A has a product B which is quite popular in the market. This product B is not protected by a U.S. patent, but the process of manufacturing product B is protected by one. In short, company A has a process patent but has no product patent.

Company A has discovered that a giant mall has been importing and selling Product B made by another manufacturer outside the US using its patented process. Can Company A succeed in an action for patent infringement against this giant mall in a U.S. district court?

The differences between US and CN:

In the US, according to section 271(g) of the Patent Act, whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product that is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sell, or use of the product occurs during the term of such process patent. The product made by the process and being imported must be a physical product, rather than intangible, like information or data.

What if the same situation happens in China? How to determine? In fact, it all depends on the real circumstances - if the product is a new product that has never been seen in the market, then the defendant will need to prove that the product is sold is not the one produced by using the patented method; if the product is a product that existed in the market before the date of application of the patent, the plaintiff will need to prove that the defendant's product was obtained directly according to the patented method.

I love know the difference in other jurisdictions, too. Hope to see your comments.

If you need IP assistance in China, feel free to reach out. #ipchina #patent litigation