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Marking of Patented Articles Important to Damage Recovery

by Curtis L. Harrington, Partner
Hawes & Fischer
Newport Beach, CA
Patent, Trademark & Copyright Matters

This short note from our distinguished legal contributor describes how to mark your products and protect them from patent infringement.

In a patent infringement suit, damages recoverable from an infringer begin to accrue after an infringer has notice of the existence of a patent covering the infringer's activities. Of course, one type of notice which will always meet this requirement is actual notice which is had by communicating directly with the infringer. Unless the patented item is specific to a narrow and definable group of potential infringers, the burden involved in giving direct notice would be tremendous. However, notice may be presumed where the patentee, or his licensees properly mark the articles produced which are covered by the patent. When patented articles are properly marked, the presumed notice enables the patentee to collect money damages from acts which occur prior to giving actual, direct notice to the patent infringer.

The specifics on marking were set forth in the recent case American Medical Systems Inc. v. Medical Engineering Corp. (CAFC 1993) 28 USPQ2d 1321, which involved a patent relating to a prosthesis.

This mechanism comes from 35 U.S.C.287 (a) which provides that:
Patentees and persons making or selling any patented article for or under them, may give notice to the public that the same 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 is contained, a label containing a like notice. 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 for the infringement occurring after such notice.

In general, once a valid patent has issued, and once the infringer's activities have commenced, damages will be allowed at the earlier of (1) the date the infringer received actual notice, or (2) date during which marking on the patentee's products began. An exception to this marking rule applies where the infringed claims are exclusively method claims. Method claims are those claims which recite the performance of a process, such as process for preparing a chemical compound, for example. Device or apparatus claims, on the other hand, are typically descriptive of a structure relating to a machine or useful article. Thus, in the case where only method claims of a patent are infringed, here is no notice limitation on the collection of money damages for infringement, meaning that no notice need be given during the time in which damages begin to accrue.

Beware, however, the situation where a product infringes both the method and device claims of a patent. Where there are both product and method claims which are infringed, the patentee must mark the products, and the provisions of 35 U.S.C. 287 (a) does apply.

The rational for the above rules lies in the purpose to encourage the patentee to give notice to the public of this patent. In the case where the only claims infringed are method claims, there is nothing which exists which can be marked. Where the patent contains claims relating both to method and apparatus, such that marking can occur, the patentee will be obliged to mark those articles which can be marked.

In addition to the motivation provided by the above damages provision, marking an article with a patent number reduces the amount of research and time expended by potential licensees in contacting the patentee since the name and address of the patentee will appear on the face of the patent. If an assignment was executed before the patent issued, the name and address of the assignee, if any, will appear on the face of the patent. At the very least, the marking of articles with a patent number provides a direct marketing line to the patentee, regardless of the many labeling and distribution channels through which the product may pass before it becomes available to the general public.

Curtis L. Harrington was born in Macon, Georgia on April 20, 1953. He was admitted to the bar in 1983 in Texas. He is licensed to practice law in the U.S. Court of Appeals, Fifth Circuit; California and Arizona; U.S. Court of Appeals, Ninth Circuit, the U.S. Supreme Court and U.S. District Court, Central District of California and is registered to practice before U.S. Patent and Trademark Office, Mr. Harrington holds B.S., M.S.Ch.E., J.D., M.B.A., M.S.E.E. degrees and is a registered Professional Engineer in Texas. He has served as Judge ProTem, Long Beach Municipal Court, 1992--; Member: Patent Panel, American Arbitration Association, 1989--. Member: Long Beach Bar Association ( Member, Board of Governors, 1994--); State Bar of California, Arizona, and Texas; member The Japan America Society of Southern California. Mr. Harrington's principle practice areas are: Patent, Trademark, Copyrght and Trade secret law.

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