When Is Patent Notice Used?

35 U.S.C. § 287 provides that after being granted a patent, a patent owner can inform the public of its existence by including the patent number and words such as "U.S. Patent No." or "patented" on products and articles sold in association with the patent.

Why Are Patent Notices Used?

Patent notices are important in infringement cases as they help to show that the defendant was aware of the patent. If the notice was absent, the patentee would have to prove that the defendant knew of the patent before they can claim damages.

How Are Patent Applications Maintained?

The United States Patent and Trademark Office keeps patent applications secret until the issuance of Letters Patent to the patentee.

How Are Actual Notices Achieved?

Actual notices are established by:

  • Sending a Cease and Desist Letter directly to the patent infringer notifying them of the patents they are infringing.
  • By filing an infringement lawsuit and sending the infringer notice of the suit.

The patentee is entitled to damages that accrue after the actual notice date if the infringer does not desist from infringement of the patent.

How Are Constructive Notices Achieved?

In the past, the only way to achieve constructive notices was by adding the word "patent" or the abbreviation "pat" and the patent number to patented products. New patent laws now allow virtual markings which are achieved by writing the word "patent" or abbreviated form "pat," and then adding a publicly accessible internet address that shows the link between the patent number and the patented item. The virtual marking makes it easier for many patent owners to maintain and update patent information online rather than updating on the physical product.

When Can Patent Owners Collect Damages?

Where the patent owner provides constructive notice, it can claim damages without actual notice. A patent owner that complies with the marking statute is entitled to claim damages six years before the date of filing the suit because the statute of limitations for infringement cases is six years.

How Are Patents Marked?

Under 35 U.S.C. § 287, patented products are to carry a marking, and if the nature of the product makes this impossible, then the marking must be affixed to the package of the patented product. Where possible, the marking should be affixed to the product itself, as courts frown at affixing it to the package because of expediency.

Who Should Comply With Marking the Products With Patents?

The patent owner producing or selling patented products is expected to mark the product with all the patent numbers associated with the item. Reasonable steps must be taken by the patent owner to make sure products are marked by all the licensees of the patent. The standing of the courts on the matter is that patent owners must show substantial compliance with the marking statute. It's important for patent owners to make sure their licensees comply with the marking statute consistently.

What Are the Patents That Do Not Require Notice?

Patents with method claims, i.e., in which there are no products to affix the marking are exempt from notices. If a patent owner files an infringement suit over method claims, the court will not determine the compliance of the patent owner with the marking statute. In such circumstances, the patent owner can claim damages for six years before filing the suit, even if the defendant didn't receive a notice.

What Are the Patents That Require Notice?

Notice is required if a patent owner produces some part of or a complete item using a patented method which includes product and method claims. For example, a software with a computer program product claim which is delivered via a physical product such as a flash drive requires compliance with the marking statute in infringement cases.

False Marking

False marking occurs when a patent number is affixed to a product by adding the word "patent" or its abbreviation "pat" and other patent notifications when the product is not actually associated with any patent application or covered by a patent.

Who Can File a Civil Action Against False Marking?

A party who loses competitive advantage through false marking may file a civil action against the false marker to collect damages for their losses.

Are False Markings Applicable to Expired Patents?

The existing patent law does not penalize marking a product with an expired patent.

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