While marking products to indicate that they are patented is necessary to maximize your patent rights, a recent case highlights the importance of marking the products accurately.
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Action Items
√ Compile a patent list for each product
√ Schedule periodic reviews of patent legends on product labels, packaging and manuals
√ Update patent legends for accuracy | |
Patent Marking to Maximize Recovery of Damages
As is commonly known, a patent holder is entitled to recover damages from an infringer for each act of patent infringement. There is an extra requirement, though, when the patent holder has its own patented product on the market. In that case, damages may be recovered only as of the time the infringer was on notice of the patent.
A patent holder can put an infringer on notice expressly, such as by direct notification or filing an infringement suit, or constructively by labeling its own patented products with the relevant patent numbers. Marking products consistently from the time the patent issues will maximize the period during which damages may be recovered. See 35 U.S.C. § 287(a).
Marking is typically done by imprinting or labeling the product with the word “Patent” or abbreviation “Pat.” along with the patent number of each relevant patent. If the nature of the product is such that it cannot be marked directly, perhaps due to its small size, marking may instead be done on the packaging. A legend such as “Patent Pending” may also be used to indicate that a product is covered by a patent application, though products sold after the patent issues should be marked accordingly.
Using Care to Avoid False Marking
While there are clear benefits to marking patented products, the patent law expressly prohibits so-called “false marking,” which includes marking “unpatented articles,” or falsely indicating that a patent is pending, with the intent to deceive the public. See 35 U.S.C. § 292(a). This may include marking a product with the correct patent number, but doing so after the patent has expired, as discussed by a recent federal court decision in Pequignot v. Solo Cup Co., E.D. Va., No. 1:07cv00897.
That court allowed a false marking case to proceed against the Solo Cup Company for marking lids, used with plastic and paper cups, with patents that had expired. It was undisputed that the patents had covered the lids prior to their expiration. The court found that once the patents expired, the lids became “unpatented articles” and subject to the false marking statute. The next step in the inquiry will be whether the company’s improper marking was done “for the purpose of deceiving the public.”
This case serves as a timely example of the need to pay close attention to product marking and labeling. Even if the defendant ultimately prevails, its practices enabled a motivated plaintiff to overcome the motion to dismiss. The plaintiff, who brought the suit under a civil enforcement provision, undoubtedly has his eye on recovering the penalty for false marking. Under the statute, he can keep half of the penalty, which is up to $500 for each instance of false marking.
Practical Tips
- When implementing a patent marking system a few steps can help to maximize its benefits and reduce any exposure to claims of false marking. Three of the basics are:
- Maintaining a spreadsheet of products and patents that identifies the patents that apply to each product, and the products covered by each patent;
- Including a standard patent marking step in existing procedures for product manufacturing, packaging and documentation; and
- Scheduling periodic reviews to determine whether there are new products or new patents, or whether any patents have expired, and updating the spreadsheet and product markings accordingly.