Police Your Patent Marking AND Your Patent Promotion

Despite the curtailment of previously rampant patent false marking suits by the 2011 America Invents Act ("AIA"), patent owners still must mark to provide statutorily required notice of their patents in connection with their patented products, or lose valuable rights to obtain damages for patent infringement. Many companies, however, go beyond marking notice and actively promote their products and services by highlighting their patents and inventiveness in catalogues, brochures, websites and direct solicitations. But as the pending suit in Bern Unlimited, Inc. v. Burton Corp.et al. (D. Mass.) illustrates, patent owners should vigilantly police their patent marking, and also their patent promotion, to guard against potential claims of false advertising for damages (including disgorgement of a patent owner's own profits).

PROPER MARKING POST-AIA

A federal statute, 35 U.S.C. § 287(a), requires patent owners to give notice to the public that their products are patented. The patent owner can satisfy this standard either by fixing on the product (a) the word "patent" or the abbreviation "pat.", together with the number of the patent, or (b) an address of a patent number posting on the Internet, accessible to the public without charge, which associates the patented article with the number of the patent (a so-called "virtual marking," a feature added by the AIA). If placing such marking directly on the product is not possible, marking can be on the packaging with a label containing an equivalent notice. Failure to mark means no pre-suit damages 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. Although failure to mark does not prevent a suit or limit damages post-complaint, it can have a significant impact on a patent owner's leverage in a lawsuit if marking questions arise.

FALSE PATENT MARKING

Marking must be accurate, however, and according to another statutory provision, false marking occurs when a party marks upon, affixes to, or uses in advertising in connection with an unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public. See 35 U.S.C. §292. Before the enactment of the AIA in 2011, individuals were free to bring claims against companies for false marking, even if the individuals were not...