Hoping I can find some help from those in the know!!
My wife has recently started a business here in the UK customizing shoes (with crystals, bows etc). On Thursday she received a email from a UK based law firm acting on behalf of Sketchers US (the large shoe firm) stating that she was infringing on a patent they have licence to use (the patent starts usD57 etc etc and was granted in 2008 to a UK based person who has subsequently sold the licence to various shoe companies.)
The email states that they will give my wife until the 10th of March to stop selling the apparently infringing items and they will take no further action. The patent is very generic and amounts to gluing crystals on the toes of shoes which thousands of people seem to be doing on eBay, Facebook, twitter etc.
My general understanding and please correct me if I'm wrong is that the US seem to grant patents for pretty much anything and that they aren't enforceable in the UK??
The actual patent is so generic I can't believe that it has been granted, even in the US. All my wife's designs are her own etc.
My wife's company is literally making a few thousand a year if that, it's only just started up, maybe 10 or so pairs of shoes a week she does. It's a tiny business due to the fact the shoes take so long to customize and it's all down to the skill of the practitioner so it's not like the business is going to go multinational!!
We are obviously concerned that such a huge company have singled us out and are not sure what the next step is. My wife has worked damn hard to establish herself and get a following.
Can she be sued for selling her products in the UK and Europe? She has never sold in the US due to the hassle with shipping, customs etc. I have checked if there is a UK patent on gluing crystals to the toes of shoes but come up with nothing...my guess is that the original patent was rejected for the UK as it is too generic a design but was granted in the US.
Also I see that companies such as ASOS sell very similar items so can understand why they have singled my wife out??
Any advice much appreciated.......we are at a loss at the minute!
A United States issued patent is enforceable only against those entities who are making, using and/or selling the invention in the United States or to anyone in the United States. As long as you do not sell a pair of shoes to anyone in or from the United States you should be fine.
This is not legal advice
If this is important to you and your wife, please consult a patent attorney in the jurisdiction where the patent is issued.
In the meantime, would it be possibe to stop the activities that the other party claims as allegedly infringing? At least until you have a chance to review the patent and get professional advice...
Last, your attorney will likely advise you and your wife not to make any public statements, such as on this forum.
infringing on a patent they have licence to use (the patent starts usD57 etc etc and was granted in 2008 to a UK based personA patent and a license are two different things. If there is no patent granted in the UK then you can sell the shoes in the UK with no problem (but not the USA). A license, I believe, only grants the right to sell the specific products made by the licensor, but only restricts selling products of similar designs if the patent was granted in the same country you are selling in.
Can you clarify the wording of the letter? Do you mean the patent was granted in the UK or just the license given to someone in the UK to sell goods that were patented in the USA?
You might have to read their wording carefully and see exactly what they are claiming. They may be trying it on with you (it wouldn't be the first time a law firm has done that) but I would not like to call their bluff without being certain of my case.
I would do two things: 1) check thoroughly the precise wording of the letter 2) contact a lawyer and/or the patent office for help finding out if the patent was actually granted in the UK. Any speculation on the matter besides this fact is worthless.
It may be of help to you, in any case, to get a lawyer to reply to them as, if they are trying to pull a fast one, they could still be able to afford to take you to court even if the case were thrown out - they may be hoping the fear and bother of a court case would just get you to stop. It may avoid any further unpleasant communications from them.
(Not a lawyer)