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Patent Marking and Constructive Notice

Posted Friday, January 4, 2013 by Mike Cicero

In order to recover damages for patent infringement, the owner of a patent must either notify the accused of the alleged infringement or simply mark the patented product. These requirements are set forth in 35 U.S.C. §287(a) which provides that a patent owner can mark the patented product by “fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with [either] the number of the patent” or with the internet address of a free internet website that associates the patented article with the patent number (the second option was recently added by the America Invents Act). The statute further provides that if the patent owner fails to so 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.” Accordingly, patent owners have a very strong incentive to mark the products it sells or, if it has licensed a patented product, to make sure that the licensees are properly complying with the marking requirements. The policies supported by the marking and notice requirements include: preventing innocent infringement; encouraging patent owners to put the world on notice that certain products are patented; and also helping the public determine whether a product is patented. See e.g., Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (Fed. Cir. 1998).

A failure to mark a patented product at the time of issuance, however, will not necessarily prevent the patent owner from collecting damages for all acts of infringement. Assuming the patent owner recognizes and corrects its failure to mark the patented products, damages may still be recoverable for acts of infringement occurring after the date on which the marking requirements were complied with. For example, in Maxwell v. J. Baker, Inc., despite a licensee initially failing to properly mark a patented shoe clip, inventor and patent owner Susan M. Maxwell made extensive and continuous efforts to ensure that the licensee began to comply with marking requirements. 86 F.3d 1098 (Fed. Cir. 1996). Following these efforts the licensee agreed to properly mark the patented products by November 1987 and thereafter the licensee successfully marked 95% of shoes sold with the patented clip. Resultantly, the jury found that Maxwell complied with the marking requirement as of that date and awarded her $1.5 million in damages for acts of infringement occurring after the date Maxwell complied with the marking requirements of 35 U.S.C. §287(a).

The marking and notice requirements are actually less discreet than they might initially seem. Considering the policy considerations listed above it is clear that notice serves these purposes while it is less clear what purpose(s) marking might serve. Essentially, marking a patented product acts as constructive notice that the product is patented. The public is put on constructive notice when the patent owner consistently marks substantially all of the relevant patented products. For example, in Maxwell, the jury found that 95% of the shoes sold were substantially all shoes sold even though a numerically high number of shoes were sold out of compliance (i.e. 5% of 31 million pairs of shoes is a numerically high number).

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