If you have been sued for patent infringement and the accusations are based upon goods that you purchased from an entity located in a different country, the CISG may be a vehicle to seek indemnity for intellectual property (IP) and patent damages.
Article 1 of the United Nations Convention on Contracts for the International Sale of Goods (“CISG”) treaty provides that it “applies to contracts of sale of goods between parties whose places of business are in different States” when the states are contracting states under the CISG. Article 10 of the CISG provides that “if a party has more than one place of business, the place of business is that which has the closest relationship to the contract and its performance.
Article 42 of the CISG deals with patent indemnity and provides: “(1) The seller must deliver goods which are free from any right or claim of a third party based on industrial property or other intellectual property, of which at the time of the conclusion of the contract the seller knew or could not have been unaware, provided that the right or claim is based on industrial property or other intellectual property: (a) under the law of the State where the goods will be resold or otherwise used, if it was contemplated by the parties at the time of the conclusion of the contract that the goods would be resold or otherwise used in that State; or (b) in any other case, under the law of the State where the buyer has his place of business.” It further provides: “(2) The obligation of the seller under the preceding paragraph does not extend to cases where: (a) at the time of the conclusion of the contract the buyer knew or could not have been unaware of the right or claim; or (b) the right or claim results from the seller's compliance with technical drawings, designs, formulae or other such specifications furnished by the buyer.”
Accordingly, depending upon the facts of your situation, the CISG may assist you in seeking indemnity for a patent infringement claim.
If you have a patent issue, or wish to register a patent, you may contact one of our patent and intellectual property attorneys for an evaluation or call 866.936.7447 (International Toll Free).