Not just Luckin Coffee! A public model product that has been sold for 5 years has recently been registered with a US design patent. What should Xiaomai do? Will applying for patents become a trend?

The word "preemptive registration" has frequently appeared in our sight recently. Not only Luckin Coffee, but even Amazon's public model products that have been sold for 5 years have recently been registered with US appearance patents. What should small sellers do?

Recently, when searching for patents for products, I accidentally discovered that two public model products I sell have been registered for U.S. appearance patents. Both have been issued, but are not in the application period!

This product has been a public model product in China for at least 5 years. I believe there are sellers on Amazon who have listed the same product very early (before 2018).

I started selling in August 2021. The competing patent was applied for in June 2021 and issued in July 2023. From a time perspective, it is impossible to invalidate the patent. Even if it can be invalidated, the time cost is too high.

The patent owner has not yet filed a complaint, but I have a feeling it will happen soon.

In my case, I have basically filed a complaint, and there seems to be no other way except to remove the product from the shelves or pay a large sum of money as a settlement.

I also thought about taking action against the other party if they complained, but it didn't really work. The other party's store only had a few products with low sales, and the store value was not high. Compared with the profits he might have made from extorting hundreds or thousands of stores (this is just a guess, it hasn't happened yet, but it's expected to happen soon), the store's profits are simply not worth mentioning.

Is the only solution to change the appearance and then apply for a patent yourself?

What do you think? Feel free to share your own opinions.

"Wonderful Reply"

Anonymous user

Let’s first talk about a concept in patents called prior art. Prior art refers to the technology or products that existed before the other party applied for a patent. Prior art can be called prior art, and prior art can be used in determining patent invalidity or infringement.

I started selling in August 2021. The competing patent was applied for in June 2021 and issued in July 2023. From a time perspective, it is impossible to invalidate the patent. Even if it can be invalidated, the time cost is too high.

----According to your situation, you can use the public evidence of others (sellers who have put the same product on the shelves a long time ago (before 2018)) to invalidate it. Others sold this product earlier and met the existing technical conditions, so this invalidation can be done;

The time cost does not occur for you at present, because you can sell it normally after invalidating it. From a legal perspective, if you invalidate a patent, then he cannot complain to you, because in this process the patent will re-enter the review stage, which is equivalent to the patent re-entering the review status, which is a " Schrödinger's law". "The status of a patent is unknown before the result comes out. Only if the result is good can he continue to complain to you. It's just that the monetary cost of invalidating a patent is indeed relatively large. It costs tens of thousands of dollars to invalidate an patent. Is it cost-effective to do it? I think it may not be cost-effective to do it myself. Ask the factory or other sellers in the same industry to do this together and share the cost.
 
In my case, I have basically filed a complaint, and there seems to be no other way except to remove the product from the shelves or pay a large sum of money as a settlement.

----In this case, you are more afraid of complaints than lawsuits. It is difficult to appeal back if your product is removed from the shelves. Even if you get a return, the other party can complain again and again, which is very annoying. Amazon is not a professional evaluation agency. Even if you may not infringe, Amazon cannot evaluate it.

But it’s different if you are sued. Present the evidence and show that this product belongs to existing technology, I have not infringed upon your rights and your patent is invalid. Therefore, you cannot use this patent to sue me for patent infringement. The other party’s lawyer is a professional and will withdraw the lawsuit directly after reading the relevant information. This way you are safe, because at least the other party will not continue to make fun of you.
 
Is the only solution to change the appearance and then apply for a patent yourself?

----In recent years, the number of patent applications has increased, and patent examinations have become slower and slower, compared with foreign TROs. The freeze has a lot to do with it. As more and more people are sued, they gradually pay more and more attention to product innovation. It will become more and more difficult to make currency and sell imitations, because people are more and more aware of intellectual property rights, and they will infringe on rights at any time. Therefore, making high-quality products and original works is the only way, and it is also the way that companies must take to comply with regulations. Selling currency can never avoid patent infringement issues.

Mcdonkey

Agree from: Vickie

Personal experience: In 2018, I launched a product. I was the second seller at that time. Later, a Shenzhen guy copied my pictures and texts, and then modified them. He even copied my product manual (the pictures were not changed, only the name was changed). He fought with me on price every day, always selling $1 less than me. I had no choice but to copy at the bottom and directly apply for a U.S. design patent.

In 2018-2019, the US had some problems with Chinese companies. After 10 months and 12,000 yuan, I still couldn't get it. The reason was that the product had been on public sale for a year, and I was not the first one to fail. The US design patent is actually examined and is very strict.

Although your common mold product has been on the shelves for 18 years by other sellers, as long as the applicant can provide strong evidence to prove that he is the inventor during the actual review process, the patent can be obtained, unless you can provide strong evidence to prove it and then deny the patent through a lawyer, or you raise an objection during the patent declaration period.

When you buy someone else's product, you basically have no weapons in your hands. The patent office will not accept your personal claims when the patent has been issued, so I advise you to give up.

Also, don’t be so naive as to say “Is changing the appearance the only solution and then applying for a patent yourself?” Even if you change the appearance, if the innovation is not enough (not much different from the original patent), the US Patent Office will still not issue you a patent. Of course, if your redesign is indeed unique and innovative, that’s another matter.

Ying Ru Shi - A not very serious man

If the other party applied for a patent earlier than you did and has a legitimate patent, there is basically no possibility of winning the case.
The risk of selling public mold products for a long time is inherent. Whether it is the product level or the trademark level, there are potential risks if there is no registered property protection or authorized channels.

The most straightforward approach is to modify the appearance of the product so that it no longer resembles the patent holder's patent. This will avoid infringement and continue to sell links. But make sure the modification is obvious enough to avoid any infringement allegations.

Or try contacting the patent holder to see if you can reach a licensing agreement, perhaps paying a fee, but allowing you to continue selling the product while avoiding links and store security.

If the patent problem cannot be solved, you can consider adjusting your product strategy and looking for sales opportunities for other similar or identical products in the same category/market segment, so as not to waste links. After all, if you are complained of infringement, not only will you not be able to continue selling products, but the accumulated link weight and comments will also be lost.

JimHuang - Post-80s entrepreneur, cross-border e-commerce intellectual property practitioner, doing difficult but right things

A product that has been sold for a long time has been patented. This happened many years ago.
There are two types of complaints:

1. Complaint within the site - sometimes Amazon will not recognize this. If the complaint is successful, you can try to appeal. There is still a chance.

2. TRO temporary freezing order - This is more rogue. Generally speaking, the person who initiates this TRO is a lot of sellers selling the product. The person who preemptively registers the product is probably doing it for the settlement money. You can count who is currently selling this product. Let's work together to find a solution. If you are really complained about, you can respond collectively.

Of course, it is possible that some sellers registered purely to prevent themselves from being tricked, and they may not complain to others. It is just to prevent those sellers with malicious behavior.

In either case, the peak season is coming. Business itself is difficult this year, and there are many cases of TROs. I personally suggest that you can work with those who sell this product to invalidate the other party's patent first. You can't just do nothing.

And even if you change the model, if you don’t apply for a patent and find that sales are good, others may copy it and then register the patent, which is a vicious cycle.

Anonymous user

This is an unavoidable problem for public mold products, not only in foreign patents, but also in China. In the future, I think the offense and defense of intellectual property rights will become very important. Either you register a patent if you are optimistic about the product, or let the factory register a patent (but the dominant power is always in the hands of others).
 
If your sales start time is earlier than the other party's license issuance time and later than the other party's application time, the other party may not succeed in the complaint (but he can keep changing store accounts to complain, and there will always be success). However, if the complaint is successful, you can use the time when the other party issued the license later than your listing time as the starting point to appeal, and there is a chance of success. If you want to operate stably and long-term, you must obtain the other party's authorization. In this case, the other party's sales volume is not high but the patent is registered, which means that it is likely that the main purpose of complaining about infringement is to obtain benefits, so your registration of a patent to counter is not very useful.

If the product is relatively stable, you can consider contacting the other party for authorization. Every failure is a lesson learned. This problem is inevitable for public mold products.
 
Another point is that the store for this product should not put too many new products on it, and other products should be gradually switched to other stores as much as possible to avoid wider impact if problems arise in this store in the future.

Anonymous user

1. Remove the product from the shelves as soon as possible, don’t wait until your funds are frozen by tro before you regret it
 
2. As for your question, "Is it the only solution to change the appearance and then apply for a patent yourself?"
 
This question is a bit like investment
Have you ever thought about registering your appearance before? Most likely you have.
 
But why wasn't it done?
Did the intellectual property department tell you that the pass rate is too low?
Does the cost of registration feel uneconomical?
Do you think the life cycle of this product will not be too long?
 
In fact, they take a big risk when they register.
 
Back to your question, if the product you make can be made by anyone in the future, does it make sense?

Anonymous user

Agree from: Vickie

The future trend is basically to go the patent route, especially for big sellers, who have many styles designed and molded individually. If they want to promote popular products, applying for appearance patents is basically standard. If the technical content is very high, there may also be invention patents.

For us small and medium-sized sellers, they are basically the styles of the market, and there are many uncertainties, whether they can be promoted or whether there will be any problems. Therefore, basically as long as there is a sign of promotion, we still have to apply for patents to protect ourselves. Looking at many top sellers, there is only one seller, or as long as there is a small number of the same style, many of them already have patents.

Anonymous user

A complaint may not necessarily be filed. Because you yourself said that this public model has been on the shelves since 2018. If there are large-scale complaints, the old seller will not ignore it. Moreover, he has an exclusive monopoly, and the factory will also lose some orders. You can find more source factories to see if you can find the seller who registered the patent. As long as you find his contact information, he will not easily mess with you. You can also fight back. There is no need for him to lose both sides. So don't be too nervous. It may also be that someone registered it to prevent malicious complaints.