Time for Clients to Start Marking?

Guest post by Paul Morgan

Recent patent legislation has removed almost all of the prior dangers of miss-marking products with patent numbers, including fully removing any risk of leaving expired patent numbers on products. (The new 35 U.S.C. § 292 is reproduced below). Yet the significant potential advantages for infringement damages recovery by marking products under 35 U.S.C. § 287, etc., remain. Patent owners who do not mark their products are prevented by §287 from recovering any damages for any of the infringements occurring prior to serving an actual, specific, notice of infringement, or bringing suit. (As a caveat, products that only “use” a patented process need not be marked under §287).

Also, marking can aid assertions of “willful” infringement – resulting in enhanced damages. Likewise, marking has the potential of aiding in establishing “inducing” infringement assertions.

Under the new statute, “virtual” marking can now be used which is easily maintained or changed and does not require product mold or tooling changes.

So, now is the time for client counseling on the reconsideration of patent marking policies by many companies. Especially those companies that had previously marked some of their products but had stopped due to the recent plague of costly mass-marking-trolls-litigation, now ended by the AIA.

Note: Of course deliberately or recklessly marking a product with a patent number that does not apply to any part of that product is still unwise. It can be potentially indirectly prejudicial for patent enforcement, FTC complaints, etc., even if competitors, or the government, cannot prove any actual damages occurred from that kind of deliberate miss-marking.

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35 U.S.C. 292

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense. Only the United States may sue for the penalty authorized by this subsection.

(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.

(c) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.

13 thoughts on “Time for Clients to Start Marking?

  1. I run a Salt Lake City Computer Repair Shop, I have an idea for an invention but have no clue where to start. The process seems so massive. Where are resources I can look at to start the process?

    Allen
    CCW Technology Computer Repair
    http://www.ccwtech.com

  2. The new statutory provision for “virtual” marking is in 35 U.S.C. 287 [this is apparently the only change to that section by the AIA]:

    “[or] by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or”

  3. You deserve everything you get,
    What could have been a very profitable FAMILY Company is now in tatters. I can’t believe my whole life has bee one secret after another, one lie after another, one more fraud committed against me after another. And the disrespect from each of you really makes me not laugh, but shake my head. I don’t know where you all saw me as BRAIN DEAD, SHAKEN BABY,INSANE, STEM DEAD, WHATEVER!
    I don’t even need to go into what you already know. I don’t need to defend myself from such lousy human beings. The Court will do that for me.
    Now I will find out everything that has been kept from me. From who I am to what has been done to me. Then and only then will MY clock start. And the good thing… this Case is unreal that getting legal help to peel each layer off will be a slam dunk.

  4. Yes, if no competitor suffered an actual injury, then only the government would have standing. You stated above, however, that only the government can maintain standing. That is incorrect where a competitor meets the requirement of subsection (b).

  5. A couple of caviats I did not get into above. The majority view has been, as I recall, that if you do not start 35 USC 287 marking the patented product until after making substantial unmarked product sales by yourself or a licensee it is too late – it’s as if you had never marked any products. I suspect that will hold for those who stopped marking who then restart marking, for the same product.
    Another important caveat is that a patent with only process claims does not require marking of products made by that process. There is also a bizzare CAFC panel decision I recall holding that if you only sue on the process claims you can get away without marking a product covered by a patent having both product and process claims.

  6. Here is the referenced section for your convenience:

    “Of course deliberately or recklessly marking a product with a patent number that does not apply to any part of that product is still unwise. It can be potentially indirectly prejudicial for patent enforcement, FTC complaints, etc.,

      even if competitors, or the government, cannot prove any actual damages occurred from that kind of deliberate miss-marking.

  7. Simple answer — injured competitors do have standing. See new subsection (b), above. I doubt a competitor would bring a case on false marking grounds alone, but it might be added into a larger battle for false advertising, antitrust claims, etc.

  8. Paul, do you have a view if, for example, the likes of Big Blue were to mark with a hyperlink as in “one or more of the following” and the hyperlink lists every patent Big Blue owns, controls or is under an obligation to mark from a third party license?

    Would the government stand bye and remain silent about such a move?

  9. Purely academic question:

    Why is it “unwise” to put bad marks on a product if the only party who can maintain standing is the govn’t (who won’t be checking into any false marking any time soon)?

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