Patent Pending
By: ELISABETH LACY BELDEN & PHILIP M. GOLDMAN
July 2006
Getting a patent is half the battle. The other half is enforcing it. (The third half is steering your own activities clear of the patents of others, but that’s another article).
Enforcement can be an expensive and complex process, but it typically begins simply enough with the patent owner giving effective “notice” of their patent rights to someone they think is, or might be, infringing. Providing effective notice can have the immediate or practical effect of causing a potential infringer to scrutinize their potentially infringing activity, after which they may decide to steer clear of the claims of your patent. The time and manner in which notice is provided can have a significant impact on the “damages” an infringer may be required to pay. Effective notice can be an “actual” notice, “constructive” notice, or both.
The patent owner can give actual notice to an alleged infringer in the form of a carefully crafted letter, which includes the identity of the patent (i.e., the patent number), a description of what the patent owner believes to be the infringing activity, and a suggestion of ways to end the infringement; for example, by establishing a licensing agreement or by requiring that the infringer “cease and desist” the offending activities.
The patent owner can, and if possible should, also provide general notice to the public, which serves as constructive notice to all potential infringers, by marking the patentee’s own articles in an appropriate manner. Directions for marking patented articles are provided in Section 287(a) of the patent statutes (United States Code Title 35) which states that: “[Patentees] may give notice to the public that [their product] is patented, either by fixing thereon the word “patent” or the abbreviation “pat.,” together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.”
Section 287(a) further provides motivation for the patent holder to mark their patented articles, stating that “In 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. Filing of an action for infringement shall constitute such notice.” In other words, a patent holder who has not marked their patented article (and thereby has no proof of constructive notice) cannot recover damages accruing between the date of patent grant and the date when the holder gives actual notice. The patent holder who does not mark a patented article will need to be all the more diligent to discover infringing activity early, and once discovered, to provide actual notice as soon as possible to the potential infringer.
How, When, and Where Best to Mark “Patent Pending”?
A patentee who seeks the benefit of marking must make a good faith effort to ensure that their patented articles are consistently and properly marked. Effective expressions include “U.S. Patent No. 6,000,000 and other patents pending,” and “patents applied for in the U.S. and abroad.” The patent number leaves little doubt as to which patent(s) are thought to apply and permits the public to find and read the actual patent(s) by accessing the database of the U.S. Patent and Trademark Office, at www.uspto.gov. Though Section 287(a) does not apply until a patent application has “issued,” use of terms such as “patents pending,” if accurate, alerts the public to the potential for patent protection. This may help the patentee establish the date of effective notice as being on or near the actual date of issuance, regardless of whether the mark itself is promptly updated.
The legend need not be accurate to the minute, since patent portfolios evolve over time, but it should be reasonably informative, and just as importantly, not deceptive. As listed patents expire they should typically be removed from the marking, perhaps not immediately, but certainly by the next time labels or packaging are updated. The Patent Office is largely trying to avoid intentional deception when it states that “the marking of an article as patented when it is not in fact patented is against the law and subjects the offender to penalty” and that “false use of these phrases [such as “Patent Applied For”] or their equivalent is prohibited.”
Using common sense, while keeping the purpose of public notice in mind, will guide a patent holder in deciding how to mark patented articles and avoid errors in marking, which could be easily overlooked amid the frenzy of bringing a product to market. Patent markings may be formed directly on a patented article, for example, by etching, molding, or printing, or may be provided on labels adhered to the article or to its packaging if “the character of the article” prohibits marking directly thereon. In the case of internet-based or internet-accessed patented articles, marking may be provided within a licensing agreement, which is typically displayed prior to allowing a user to download software, or on a home page of a website. Because patent numbers are seven digit, and a patented article may be covered by more than one patent, the mark is susceptible to typographical errors. The patent holder must carefully review the accuracy of the mark in the final plans or drawings for the article before releasing them to production.
Abiding by the strict letter of the statute can be somewhat difficult for a patentee who has authorized licensees or others to make or sell their patented articles, particularly if the patented articles do not accommodate marks and thus require labels. Fortunately, the courts have used a “rule of reason” approach to hold that constructive notice, per Section 287(a), is achieved when the patentee consistently marks substantially all of the patented articles.
Finally, it should be noted that Section 287(a) only applies to patent holders making or selling articles. Thus, if a patent holder never produces any patented articles, or if the patent covers a process, or a method, which, apart from an associated fabricated article, cannot accommodate a mark, the time line for calculating damages does not depend upon a date of constructive or actual notice. Rather, damages can begin accruing on the date of patent grant as long as the infringing activity is coincident with that date. Situations involving patents claiming both methods and apparatus can get complicated, and a discussion of all the various scenarios, which may be encountered in this realm, is beyond the scope of this article.
As you might expect, the best approach to patent marking may be - when in doubt, call your patent attorney.