Patent Marking – Patent Owner Beware

How often have you noticed that a product bears a label of “patent pending” or “U.S. Patent No.”?  But, what if that patent does not cover the product?  Or maybe there is no “patent pending”?  Well, anyone could have a “false marking claim” against that manufacturer and could recover up to $500 per article manufactured with such label.  As one could imagine, the recoverable amount or damages could be very large.  Therefore, it is recommended that businesses implement procedures to avoid potentially false marking their products and minimize potential risk for liability. 

Many products or packaging are marked with the label “patent” or a variant such as “pat.” and a full patent number or “patent pending”.  This “marking” provides notice to the public that the product is patented or has a patent pending.  Notice to the public is required to ensure a patentee’s right to damages for a time period prior to notice to the offending party if the patent is ever litigated.  In other words, failure to properly mark a patented product limits the time period by which one can recover damages. 

There are three types of “marking” prohibitions. The first type includes “counterfeit marking” which is the use of a patent mark without the owner’s permission.  The second type includes “false marking” which is the use of a patent mark on an unpatented article.  The third type includes “false patent pending marking” which is the use of “patent applied for” or “patent pending” when no patent application covering the product is pending with the United States Patent and Trademark Office.

If an unpatented product is marked with a patent number and it can be proven that the party marking the product had the intent to deceive the public, then a penalty of up to $500 per article can be recovered.  Any person can sue for this penalty, in which event one-half of the recovery goes to the person suing and the other half to the U.S. government.  By permitting members of the public to sue on behalf of the government, Congress has allowed individuals to help control false marking.

 However, for patents directed to process or method claims the notice provision or “marking” does not apply.  The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus, i.e., product, and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to recover damages under the method claims prior to notice to the offending party.

Some recommendations that businesses may implement to avoid potentially false marking their products and minimize potential risk or liability include the following.  One recommendation is to review all current patent marking to verify that a product is marked with at least one claim in a patent that covers the product.  Also it is important to check for any expired patents and if there are any expiration dates approaching.  If any expired patents are found, then it is recommended to stop marking with that number upon expiration.  Similarly, if the maintenance fees have not been paid for a patent and the patent is no longer enforceable, then stop marking with that number.

 Additionally it is suggested to avoid conditional marking, i.e., “product may be covered by one or more of the following patents”, unless the product is covered by at least one claim of every listed patent.  Also avoid marking “patent pending” unless there is a reasonable belief that such marked products are covered by one or more claims in a pending patent application.  If a patent application is no longer pending, i.e., abandoned, then businesses should stop marking products with “patent pending”.

In addition to reviewing products, it is recommended to review product literature, brochures, presentations, advertising, and other materials that may be marked.  Businesses may also want to review any licensing programs for third party marking activities.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about patent marking or any other aspect of intellectual property law.