The purpose of this monthly series Patently Enabled is to share simplified patent related information to assist non-patent practitioners in making the best decisions when considering their intellectual property rights.
COMPLY WITH THE NOTICE REQUIREMENT BY PATENT MARKING
EMPOWERING INDIVIDUALS TO MAKE THE BEST DECISIONS WHEN CONSIDERING THEIR INTELLECTUAL PROPERTY RIGHTS
WHAT IS PATENT MARKING?
Patent marking gives notice to the public that the patentee or an authorized licensee is making, offering for sale, or selling within the United States or importing into the United States a patented article. Marking is not required to enforce a patent, but failure to mark your goods may have consequences.
WHAT SHOULD YOU MARK?
Generally speaking, products that are comprised only of a patented method do not require marking. However, that may not be the case for goods that employ both an apparatus and method patent, unless the patentee seeks to only assert its method claims in litigation.
WHY IS PATENT MARKING IMPORTANT?
If a patentee sues an infringer for selling a patented product in competition with the patentee or one of its licensees, the patentee is not entitled to damages unless the infringer had notice of the patent. Marking patented goods gives constructive notice. If a good being sold has not been marked as patented, however, infringers may not be liable for money damages until actual notice is provided. Failure to mark may provide an affirmative defense to patent damages. It is the alleged infringer’s burden to prove the patentee did not provide proper notice. This requires a showing that the patentee or an authorized licensee sold specific unmarked products that practice at least one claim of the patent. The patentee may rebut by proving that those products do not in fact practice the invention.
To properly mark your goods, you must mark the good with the word “ patent ” or “ pat. ” and include the patent number(s) of any patent with at least one claim reading on the good. You can also virtually mark your goods by including “ patent ” or “ pat. ” on the goods followed by a website address where the patent number(s) and product can be found. Patent applications can be included as well. This can be beneficial when multiple patents have claims reading on the good and/or additional patents are expected.
HOW DO YOU MARK?
WHAT IF THE PATENTEE DID NOT MARK THE PRODUCT?
A patentee may satisfy the notice requirements of 35 U.S.C. § 287(a) by notifying the alleged infringer of the identity of the patent and the claimed infringement, i.e., by providing actual notice. The patentee must make an affirmative communication of a specific charge of infringement by a specific accused product or device.
CONTRIBUTORS
Emily Ferriter Russo is an associate at Day Pitney and assists clients in intellectual property litigation (including patents, trade secrets, copyrights, and trademarks) and patent prosecution matters. Emily started Patently Enabled , because she believes in empowering individuals to make the best decisions when considering their intellectual property rights. eferriterrusso@daypitney.com
Our Intellectual Property and Technology Group Every day, Day Pitney intellectual property attorneys help clients acquire, secure, transfer, defend, enforce and understand their intellectual property rights. We prosecute patents and trademarks; negotiate and draft agreements for the license and sale of intellectual property rights; litigate intellectual property disputes in federal and state courts around the country, including before the International Trade Commission (ITC) and the U.S. Patent and Trademark Office; and advise clients on the entire array of evolving intellectual property issues modern businesses confront, including workplace policies relating to Internet access and use, social media, and privacy.
George Chaclas is a partner at Day Pitney and the chair of its Patent Prosecution and
Client Counseling Group. gchaclas@daypitney.com
Thank you for considering this post, which is a general summary meant to reduce complex issues for general practitioners and inventors. They are not intended to be exhaustive by any means. For any comments, questions, or other inquiries, please contact registered patent attorneys Emily Ferriter Russo or George Chaclas at Day Pitney LLP. This communication is provided for educational and informational purposes only and is not intended and should not be construed as legal advice, nor does its distribution or receipt create an attorney-client relationship. This communication may be deemed advertising under applicable state laws. Prior results do not guarantee a similar outcome. If you have any questions regarding this communication, please contact Day Pitney LLP at 605 Third Avenue, 31st Floor, New York, NY 10158, (212) 297 5800.
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