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Failure to mark the patented product may jeopardize patent owner’s rights or damages collectable in patent infringement claims. In fact, in the United States, the lack of notice to the public that the product is patented may result in a substantial reduction in the awarded damages from a patent infringement claim.
A patent grants its owner the exclusive rights in making, selling, or importing the patented invention, and allows the owner to bring a patent infringement claim for damages against an infringing party. By properly marking the products, the public is made aware of a pending patent application or an issued patent. Failure to mark the patented product may jeopardize patent owner’s right or damages collectable in patent infringement claims. In fact, in the United States, the lack of notice to the public that the product is patented may result in a substantial reduction in the awarded damages from a patent infringement claim.
The US patent marking provision
Title 35 of the United States Code, Section 287(a) (“Section 287(a)”) provides that: “Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, 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 of them 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 only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.”
Failure to mark patented products may deny damages
Under Section 287(a), if the patent owner fails to mark the products properly, it may not recover damages for any patent infringement that occurs before the infringer has been notified of the patent. The patent owner can recover damages only from the date when there was an actual notice of infringement to the infringer, such as a cease and desist letter claiming patent infringement or the filing of an infringement suit.
What products should be marked?
Under Section 287(a), any patented product needs to be marked, and this duty to mark extends not just to the patentee but to any person making, offering for sale, or selling the patented article.
Even if the product is only an unpatented component of a patented combination, the patent owner must still mark that component, with label such as “for use under U.S. Patent No. X,XXX,XXX”. If the patent owner sells to others who assemble the patented combination, it should ensure that they will mark their products properly.
In general, each and every patented product must be marked. However, a de minimis marking doctrine does exist which allows a patent owner to meet the marking requirements even though not every patented product is marked, for example, where only a few products out of a great number of products are not marked.
Markings for method patents
The US Supreme Court noted that marking can only be applied to some fabricated articles. Accordingly, the marking requirement does not in general apply to method claims or if there is no product to be marked. However, the Federal District Court of Delaware in IMX Inc. v. LendingTree LLC, D. Del., No. 03-1067, 12/1
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