The Marking Requirement: Here is How the Statute has been Interpreted.

The Marking Requirement: Here is how the marking statute has been interpreted.

  • If a patentee sells (or authorizes the sale of) a product that is covered by the patent, the patentee can only collect past-damages for patent infringement if either (1) the product was properly marked as patented or (2) the infringer had actual notice of its infringement and continued to infringe.
  • If there is no authorized product covered by the patent, then the patentee can collect past damages (up to six years) even if the infringer had no knowledge of the patent.  Method claims typically do not have a corresponding product. However, there is some debate about the collection of past-damages without notice for method claims when the patent also includes apparatus claims that cover an authorized product.

Thus, the seeming plain language of 35 USC 287 does not apply. Section 287 indicates that “[i]n the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”  Courts have held that this section does not apply if the patentee had nothing to mark. 

This background law was described by the Supreme Court in its 1936 case captioned Wine Ry. Appliance Co. v. Enter. Ry. Equip. Co., 297 U.S. 387 (1936).  In that case the court held that “issuance of a patent and recordation in the Patent Office constitute notice to the world of its existence.”  Interpreting a precurser to today’s marking statute, the Supreme Court wrote that “[p]enalty for failure [to mark] implies opportunity to perform.”

48 thoughts on “The Marking Requirement: Here is How the Statute has been Interpreted.

  1. IANAE Your patents have nothing to do with your products anyway. All you ever care about from a business standpoint is how your patents compare to your competitors’ products. Companies don’t normally think about whether their products practice their own patents, and sometimes they don’t even think about whether their patents cover their products. The latter is probably a tactical error, but still.

    I think you made your point about the contradictions that result from the current marking/damages regime much more persuasively above. These underwhelming and inaccurate observations aren’t helping.

    Imagine if you have hundreds of patents and applications

    Then I’d better hire some people to help me comply with the marking laws or determine that it’s not worth it for me to do so or hire a lobbyist to change the laws in my favor.

  2. IANAE,
    There is no duty to mark until the patent issues, so generally amending a claim would not necessitate evaluating “infringement” by your product. You should make the evaluation when your patent issues.

  3. Marking isn’t usually that great a burden on the patentee,

    Based on recent developments, I’d say it’s surprisingly challenging for a company to stay on top of the requirements for marking. Imagine if you have hundreds of patents and applications, and every time you amend a claim in prosecution you have to look at all of your dozens of products to see whether they still “infringe” any of the new claims. And then if one does and you missed it, you can’t even claim back damages for infringement of a claim you weren’t practicing, but only because they happen to be in the same patent.

    Yes, the patent itself is constructive notice, but honestly, there are something like two million live patents out there. You don’t really know about the patent, and finding it is non-trivial.

    Be that as it may, the mere existence of the patent is notice enough when you don’t have a product. So why isn’t it notice enough if you do?

    I don’t pretend that it’s clear-cut whether a patent that is merely searchable at the PTO should effect notice, but whether it does or not shouldn’t change based on what you happen to be selling in your shop.

    So the statute basically punishes you if you put your product out there without telling people that you have a patent.

    Exactly. But it shouldn’t. Your patents have nothing to do with your products anyway. All you ever care about from a business standpoint is how your patents compare to your competitors’ products. Companies don’t normally think about whether their products practice their own patents, and sometimes they don’t even think about whether their patents cover their products. The latter is probably a tactical error, but still. It’s not like marking is just doing what the company was doing anyway and then stamping a number on a widget. It’s a whole other project they need to do.

  4. An interesting feature of this breakdown is that there is a distinct advantage to prosecuting method claims in separate applications. I’m not aware of anyone who does this, however. Anyone?

    Products and methods are routinely prosecuted separately in chem/bio applications.

  5. Mara, you should ask the attorney who is prosecuting your application (if you are doing it pro se, then Heaven help you). But the short answer, which is not legal advice, and which you may not rely on for any reason whatsoever, and that you should assume is a blatant and deliberate lie on my part, is no, you’re not going to be able to sue e-bay. You won’t even get the back damages unless the claims issue in substantially the same form, and even then, it’s only a reasonable royalty.

  6. Explain to me why it makes sense that an unmarked product sold by the patentee screams “copy this freely” louder than his published issued patent screams “don’t copy this or I’ll sue.”

    I think it makes more sense if you look at it from the opposite direction: the policy is, we like marking. Marking isn’t usually that great a burden on the patentee, and it’s an easy, accessible way to put people on notice that they can’t copy the product. Yes, the patent itself is constructive notice, but honestly, there are something like two million live patents out there. You don’t really know about the patent, and finding it is non-trivial. If you’re going to make it and put it out there, we want to encourage you to take the small extra step of giving people a heads up. So the statute basically punishes you if you put your product out there without telling people that you have a patent.

  7. I was wondering if someone could help me with this. I am beyond frustration with people who copied my patent pending product and are selling them on eBay and other auction sites, same sites where I also sell my products marked as patent pending. I warned them about it, but they simply don’t care. I also warned eBay ansd was told they will only remove their products if I have an approved patent. My non-provisional application was recently published. It is my understanding that once my patent gets approved I can sue for damages since the day patent application was published. My question is whether I could also hold eBay responsible for damages since they allow selling of infringed products on their site and collect fees for that? Thank you for taking look into this.

  8. All this talk about DUTY to mark…

    ewwwww – malcomy fingerprints all over ideas for Oliver Sacks.

  9. Where do you derive this notice function of a patent publication?

    The non-practicing patentee is automatically entitled to all back royalties for 6 years, without any showing that the infringer was actually aware of the patent, but the practicing patentee must give constructive or actual notice to claim the same remedy.

    If it quacks like a duck…

  10. You are so not a lawyer.

    Huh. I thought for sure I used enough big words.

    Give me a lawyer’s take on the issue, then. Explain to me why it makes sense that an unmarked product sold by the patentee screams “copy this freely” louder than his published issued patent screams “don’t copy this or I’ll sue”.

    Bonus points if you can logically connect the one specific product to the entire scope of the patent that covers it.

  11. You are so not a lawyer.

    Another flawless argument! I wonder if it’s something in the water? Or perhaps it’s genetic, and Noise and NWPA are twins, separated at birth.

    So please tell us, NWPA, why does it make sense that someone who actually practices his own patent should be penalized for it? Or are you going to give us a “mantra” about how marking is a privilege, not a burden, and that marking IS the status?

  12. I am starting from the assumption that the statute is valid

    I also assume the statute is valid, I just think it’s outdated and should be given some attention with all this talk of patent reform.

    I suppose there could be a requirement to mark products that inherently use a patented method, but that would be moving the law in the wrong direction for my liking. As the law now stands, I think the correct interpretation is that method claims would be entitled to back royalties even if corresponding apparatus claims are used in an unmarked product. I mentioned that in another thread.

  13. >>It makes no sense that practicing your own >>patent in any capacity should operate as a >>public renouncement of any portion of your >>patent right.

    You are so not a lawyer.

  14. IANAE,

    I am starting from the assumption that the statute is valid and so I’m not too worried about the general concept of a marking requirement. My question is more to whether the statute would in fact apply to a specific situation I think it should.

  15. If the patentee sells a physical product that embodies both apparatus/composition and method claims, there SHOULD be a duty to mark with both types of claims but it doesn’t seem the law is clear.

    There should be no duty to mark at all. If an NPE’s patent publication gives constructive notice to the world, the notice function of a PE’s patent publication should not be defeated by the sale of an unmarked product. It makes no sense that practicing your own patent in any capacity should operate as a public renouncement of any portion of your patent right.

  16. Anyone got a sense of whether the CAFC would be willing to take the marking question up en banc and clarify things once and for all? Dennis noted that in Crown Beverage the majority found no duty to mark with “palpable regret.”

    It seems a little silly to allow a patentee to escape his duty to mark his own product just because he can assert method claims that cover the only substantial use of the physical product.

    As Hobbes noted, this seems like the shadowy nether region in the marking world. If the patentee has not physical product, I think you have a pretty good case for no duty to mark (though marketing materials give an opportunity to mark). If the patentee sells a physical product that embodies both apparatus/composition and method claims, there SHOULD be a duty to mark with both types of claims but it doesn’t seem the law is clear. This analysis conveniently conforms to Quanta’s “anything-that-covers-the-product” theory of exhaustion.

  17. Hobbes, a right without a remedy is no right at all.

    Just as you can have a patent right without an injunctive remedy, you can have a patent right without a monetary remedy. One particular remedy does not make the right.

    The patentee who sells unmarked product is likely to get an injunction and damages (including trebles) for post-notice infringement on those facts, so he’s not completely without remedy.

  18. Hobbes, a right without a remedy is no right at all.

    I would argue that Congress expressed a strong public policy favoring competition in unpatented products that would be frustrated by holding that willful copying of unmarked products placed the copier into a willful infringement position after notice.

  19. Is this copying willful infringement? In a sense, it is not, because it is authorized by the statute. That is a argument that somebody is going to make someday.

    Perhaps, but I bet they lose. Congress knows how to distinguish between deeming an activity non-infringement and simply limiting damages. Compare 271(e)(1) (“…it shall not be an act of infringement…”) to 287(a) (“…no damages shall be recovered…”). Note that 287(a) also includes a reference to “the infringer” that is quite suggestive that it’s infringement even when damages are unavailable for failure to mark.

  20. The PO has the option of giving actual notice, but the infringer has a pass granted by the marking statute to “willfully infringe” with impunity until notified or sued. In essence, one can copy an unmarked product and be assured that he is not going to be liable in damages for a patent on that product until actually notified.

    So, when asked for an opinion on a patent, every good practitioner should ask whether the PO is selling a product covered by the patent and whether it is marked. If the answer is that the product is covered and it is not marked, there are no damages regardless of whether the patent is infringed.

    Is this copying willful infringement? In a sense, it is not, because it is authorized by the statute. That is a argument that somebody is going to make someday.

  21. He cannot remember how many different sockpuppets he is.

    Tell you what, if Malcolm can’t be trusted for that, I volunteer to be in charge of remembering that I’m not him.

    Let’s get back to patents, shall we? I agree that marking serves a valid purpose, but that purpose should not be constructive notice for the purposes of royalties.

    Suppose someone punches you in the face. You should be entitled to damages whether or not you’re wearing a t-shirt that says “if you punch me in the face, I’ll sue”. Similarly, while a practicing entity (face model, maybe?) may be able to prove and therefore collect a greater quantum of damages, you should still be entitled to all the damages you can prove even if you always wear a ski mask in public.

  22. …with no intended disrespect for those suffering from alzheimers and schizophrenia (I am NOT saying you are like malcolm).

  23. Doubtful IANAE,

    Malcolm’s mental issues likely include alzheimers and schizophrenia.

    He cannot remember how many different sockpuppets he is.

  24. More importantly, NPEs should be treated differently

    I’m glad we disagree on something. Maybe now these crazy people will stop insisting we’re the same person.

  25. My recollection is that the law was previously clear that if the patent had both apparatus and method claims, and the apparatus claims covered your product, that the marking statute applied. Then along came a curious fairly recent CAFC panel decision that said no if you were only suing on the method claims.

    I don’t find the case particularly curious. You can’t mark a method.

    If the statute required patentees who manufacture articles using a patented process to mark those articles with the patent number, that would be a different story. But then we’d to deal with questions about how closely the method needs to relate to the article. Not every method claim is a “product-by-process” sort of claim. And what about methods of using the product? (I’m not really interested in the answers)

    I believe the marking statute continues to have a valid purpose, although the possibility now exists for serious abuse of the false marking damages provisions. More importantly, NPEs should be treated differently regardless of the marking statute. And by differently, I mean that the law should discriminate against them relative to practicing entities.

  26. NAL Funny how those who portray themselves as protectors from patent abuse STILL don’t pick up this line of thought.

    What’s the weather like in China today, NAL?

  27. … the fact that a legal difference exists was my initial point. That point stands.

    Indeed it does. NAL was right all along!

  28. - and also covered was the point that such expediency gained by marking should be protected –

    Marking your products to give notice is not a benefit or a convenience. It’s a cost avoidance. A published, non-practiced patent gives notice to the world, but a published, practiced patent requires marking to give the same notice. The “power” of marking is to draw you back even with a patentee who has literally done nothing at all. That’s anti-business, which is not the same thing as being pro-NPE.

    We can rationalize the whole thing by saying the practicing entity trades back damages for a shot at an injunction, but I think it would make far more sense to give all patentees royalties for all past infringements.

  29. “9 Harv. J. Law & Tec 429″ covers some background and history pre-Wine Ry. Appliance Co.

    “It’s the only way…” – Yes, this was covered previously. No need to make “idealism” a smokescreen here – the fact that a legal difference exists was my initial point. That point stands. Of course, things get real interesting with the NPP wrinkle…

    - and also covered was the point that such expediency gained by marking should be protected – but this also was lost in the shuffle. As can be seen here – marking has a power that shouldn’t be so easily dismissed.

    Funny how those who portray themselves as protectors from patent abuse STILL don’t pick up this line of thought.

  30. Paul,
    I’d say your recollection is correct. American Medical, which interestingly cited with approval the early Fed. Cir. Hanson case, has been cited broadly for the proposition that where a patent has both method and apparatus claims, marking is required. This may not be so clear cut after the recent Fed. Cir. case you note. Arguably, AMS could be more limited. In American Medical, the Federal Circuit stated that when both apparatus and method claims of a patent are asserted and “there is a physical device produced by the claimed method that was capable of being marked,” the patentee was required to mark its product.

    Another interesting marking issue is who’s burden it is to prove the marking statute has been triggered such that the patentee must prove compliance. There is division in the district courts on that issue.

  31. Paul: Then along came a curious fairly recent CAFC panel decision that said no if you were only suing on the method claims.

    Seems clearly wrong to me that your damages for infringed claims should depend on whether you also assert other claims. If the method claims are entitled to back damages, they should always be.

    NAL: One can provide notice without marking – marking is expedient, but is not the same legally as notice.

    It’s the only way of giving notice that doesn’t require you to find out someone is infringing first and track down the infringer, subject yourself to DJ jurisdiction, still miss out on damages during the intervening period, and still have to give notice separately to any other infringers.

    Marking may not be legally identical to notice, but from a business point of view it might as well be. Put down your idealism for a moment and join us in the real world.

  32. In some cases, marking obviates any need to provide notice. In other cases, neither marking nor notice is required.

    I suppose you could also phrase it as: In some cases, some form of notice is required – it can be provided via marking or via actual notice to an infringer. In other cases, no notice is required.

    But notice and marking aren’t legally the same in this formulation either.

  33. An interesting feature of this breakdown is that there is a distinct advantage to prosecuting method claims in separate applications.

    Probably comes down to whether the extra PTO and attorney fees cost more than the risk of getting your marking wrong, since you should be marking anyway as the law stands.

    Noise will get back with you in just a few minutes after she’s done eating her big bowl o’ crow.

    Noise never eats crow. She looks at it, and says “huh, that’s a big ol’ bowl of crow. I’ll consider it, and get back to you.”

  34. One can provide notice without marking – marking is expedient, but is not the same legally as notice. Anyone else comment on this particular nuance?

    I’m sure I’m being dense again, but I don’t see what the nuance is. I don’t think anyone has suggested that marking and notice are legally the same. In some cases, marking obviates any need to provide notice. In other cases, neither marking nor notice is required.

  35. “collect pre-notice damages”

    …therein lies my thoughts (still not quite dead) that notice and marking are different.

    One can provide notice without marking – marking is expedient, but is not the same legally as notice. Anyone else comment on this particular nuance?

    This point keeps getting lost in the shuffle.

  36. Why should damages for past infringement be tied to a product? Doesn’t this give trolls (patent holders that are not manufacturers) an advantage in the marketplace?

    We should do away with the marking requirement. The goal of the patent system is to encourage people with great ideas to share them with the public. Producing a product is not necessary to accomplish that goal. And if you do happen to produce a product and you do not mark your product, knock-off artists will be rewarded if they can infringe without fear of damages. A reasonable royalty ought to apply in all cases, even when the infringer was not aware of the patent. Principles of equity suggest that the patentee can only go so far back in time to collect a reasonable royalty, such as six years, but to place an extra burden on the manufacturer but not the troll doesn’t make sense.

    Just as an assignment provides notice to the public of ownership rights, publication of a patent ought to be sufficient notice to the public of patent rights, and a reasonable royalty ought to apply.

    I hope that this is being discussed in connection with the changes to the Patent Act.

  37. Re: “However, there is some debate about the collection of past-damages without notice for method claims when the patent also includes apparatus claims that cover an authorized product.”
    My recollection is that the law was previously clear that if the patent had both apparatus and method claims, and the apparatus claims covered your product, that the marking statute applied. Then along came a curious fairly recent CAFC panel decision that said no if you were only suing on the method claims. Let me know if anyone disagrees and can provide the case cites.

  38. Anyone else?, Noise will get back with you in just a few minutes after she’s done eating her big bowl o’ crow.

  39. However, there is some debate about the collection of past-damages without notice for method claims when the patent also includes apparatus claims that cover an authorized product.

    Well yes, there might be some debate, just as there actually was some debate yesterday about the meaning of Section 287(a). However, my understanding is that the Federal Circuit has been pretty consistent on this point – if a patentee asserts both apparatus and method claims in a patent, then the patentee is required to mark in order to collect pre-notice damages. American Medical Systems, 6 F.3d 1523 (Fed. Cir. 1993); State Contracting & Engineering Corp., 346 F.3d 1057 (2003). If there are two related patents, one with method claims and one with apparatus claims, but only the method claims are asserted, then there is no obligation to mark. State Contracting. I believe there is a little ambiguity with regards to the situation where there are method and apparatus claims in a single patent, both of which apply to an accused product, but only the method claims are actually asserted. However, my best guess is that the Federal Circuit would find an obligation to mark in this last case.

    An interesting feature of this breakdown is that there is a distinct advantage to prosecuting method claims in separate applications. I’m not aware of anyone who does this, however. Anyone?

  40. “However, there is some debate about the collection of past-damages without notice for method claims when the patent also includes apparatus claims that cover an authorized product.”

    Ruh Roh, indeed.

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