Intellectual property represents a significant asset of many businesses, whether in the form of patents (for inventions), trademarks (for words, symbols or devices that identify the source of goods or services), or copyrights (for creative works, such as paintings, music, literature, etc.). In the case of patents, using the proper patent marking, as well as understanding the consequences of not marking, can be important considerations in preserving and maximizing the value of your patent rights. The following presents a brief guide regarding basic patent marking concepts under U.S. law.
Under the U.S. Patent Act, “Patent” or “Pat.”, followed by the issued U.S. patent number, is a proper marking for a patented article. Although direct patent infringement is a “strict liability” offense lacking any knowledge or intent requirement, such marking affords “constructive notice” of the patent to any infringer. This means that the infringer may be liable for damages if proper marking is made by the patentee, regardless of the infringer’s actual knowledge of the patent.
Placing a patent number other than on the patented article, such as on packaging or in advertising, typically does not qualify as proper marking. An exception exists where marking is impractical (such as for a patented chemical composition). However, this exception is narrow and unlikely to apply where marking the patented article is remotely practicable.
Marking can commence at any time after a patent issues. Once commenced, “substantially all” patented articles must be marked. Marking must also be done by those authorized by the patentee to practice the patented invention, including licensees. Given the lack of direct control in such a situation, a “rule of reason” is applied in analyzing whether the patent-marking requirements have been met by those marking on behalf of the
patentee.
A common misconception is that the law requires marking patented articles with the patent number. A failure to mark does not impact patent validity or enforceability but will preclude an award of damages for infringing activity occurring prior to the infringer receiving actual notice of a claim of infringement (often, the service of a complaint filed long after the infringement has commenced). Given the significant cost of a patent infringement suit, proper marking is thus highly recommended to maximize the potential award of damages (and possibly attorney’s fees) to offset the costs of litigation. Likewise, a party accused of infringement should be aware that a failure to mark may reduce any damages available and potentially result in a more favorable settlement.
Marking is also not required if no patented articles are made. This is also the case for patents directed solely to methods or processes, which cannot be marked.
The doctrine of “marking estoppel” provides that use of the patent number on an article may foreclose a later claim that the article is not covered by the patent. This often applies when a licensing dispute arises, yet manufacturing continues by a licensee with continued marking. Likewise, when a patent license is terminated, the licensee may implement a design change to avoid the patent yet inadvertently fail to remove the patent number from the redesigned article. In both situations, the licensee may be precluded from claiming the marked articles do not infringe the patent.
The practice of indicating that a component is part of a patented combination by using the term “for use under” the patent has been sanctioned. However, it remains an open question whether all components of a patented system must be marked (the prudent approach) or if marking a single component is adequate.
The recently passed America Invents Act of 2011 impacts patent marking considerations. This new law provides for “virtual marking,” which may include using a freely accessible web address on the patented article and then listing the relevant patent number or numbers at the address rather than on the article. This may be of significant benefit to manufacturers, since it allows for marking updates without costly changes to tooling or packaging.
Maintaining a claim for false patent marking is considerably more difficult under the new law. False marking actions are limited to those who can demonstrate a competitive injury. An exception also now exists for patent markings placed on articles for which patent protection expires after the marking has occurred.
“Patent Pending” indicates that a pending patent application exists for a particular invention. Contrary to popular belief, such a designation confers no legal rights whatsoever (especially since a pending patent application cannot be enforced). Nevertheless, using “patent pending” may help ward off a would-be infringer and also keep it in the dark as to the scope and content of an unpublished pending patent application (making a design-around more difficult). Although “patent pending” confers no legal rights, falsely using such a designation can result in a claim of unfair competition and should thus be avoided.
Proper marking is an important consideration in any business strategy involving patents. While the above guidance seeks to demystify the basic concepts associated with patent marking, those interested in validating their practices should consult an attorney specializing in intellectual property.
Andrew D. Dorisio is a registered patent attorney with King & Schickli, PLLC.