05/26/2010 06:53:00 AM EST
False Patent Marking: Are You The Next Defendant?
If your company sells
patented products, now is a good time to review your patent notices for
accuracy and establish procedures to avoid becoming the next defendant. If you
do uncover issues, it is likewise a good time to confer with outside counsel to
ensure that you can effectively defend against any case that might be brought
by any disgruntled employee, patent troll, or any person. In this Analysis, Paul
McQuade and Manuel Cordovez discuss false patent marking and provide a
checklist to avoid false marking. They write:
Why Mark a Product in the First Place?
Given the scale of potential liabilities
in view of the Forest Group [v. Bon Tool Co., 590 F.3d 1295 (Fed.
Cir. 2009)] decision, one might instinctually want to remove any patent markings
from one's products as a protective measure. However, in order to recover
damages for infringement, the Patent Act also requires that products carry the
appropriate patent number(s) as constructive notice to others that the item is
patented. If one were to sell products without indicia of patent coverage,
damages for infringement could only be recovered prospectively from the time a
suit is filed, or actual notice is provided to the infringer. The difference
between being able to sue for years of damages for past infringement, versus
only prospective damages, can be substantial. Moreover, if one has invested in
research and expended the time and resources to patent a new invention,
removing the patent notice, and thus the prospect of damages, diminishes the
value of one's IP assets.
For these reasons, it is important that
articles of manufacture continue to carry some indicia of being patented. To
qualify as constructive notice entitling one to infringement damages, patent
marking of a product must be "substantially consistent and continuous." This is
a question of fact, which will be resolved upon the particular circumstances of
each case. In Maxwell v. J. Baker Inc. 86 F.3d 1098
(Fed. Cir. 1996), the court held that marking 95 percent of all products constituted
constructive notice because "substantially all" of the products were routinely
and continuously marked and the patent holder attempted to comply with the
statutory marking requirements. In other cases, a lower percentage of marked
products failed to qualify as constructive notice and the right to recover
infringement damages prior to actual notice was lost.
. . . .
Checklist to Avoid False Marking:
Based on recent developments, therefore,
the following steps should be considered:
1. Review current
labeling regimes - Are markings accurate?
2. Review each patent
listed -- Does each have at least one claim that reads on this product?
3. Use "patent pending"
only when an application is on file.
(footnotes and citations
Access the full version of False Patent Marking: Are You The
Next Defendant? with your lexis.com ID. Additional fees may be incurred.
(approx. 7 pages)
If you do not have a lexis.com ID, you can purchase the
Emerging Issues Analysis content through our lexisONE Research Packages