It’s never a bad time for companies holding U.S. patents to assess their patent marking strategy and compliance. Patent marking is often neglected or relegated to the marketing team, but it shouldn’t be. Whether what and how you mark products and advertise goods as patented or patent pending can have serious implications.There are two statutes in the Patent Act devoted to this topic. One encourages proper marking, while the other discouragesimproper marking.I. Encouraging Proper Marking (Failure to Mark)Marking products with the patent number(s) covering them serves a notice function encouraged by statute. Specifically, 35 U.S.C. §287 can limit the damages period available for infringement of a patent where an owner or licensee of the patent failed to mark products they sold that were covered by the patent. Infringement damages are typically available six years back from the date the suit is filed, assuming the patent rights and the infringement date back that far. But if patent marking was required and not performed, that period is truncated before the date upon which the plaintiff gave the defendant actual notice of infringement of a particular patent by a specific product. Often, this actual notice date is the date the suit was filed.There are many nuances under this oft-litigated section of the Patent Act, and courts don’t align on the answer to every related question. Method claims are generally immune to the marking requirement; however, courts have truncated the damages window for entire patents over a failure to mark where apparatus or system claims are asserted in addition to method claims—even where the a

Patent Act requires patentees to mark their products with the numbers of any patents that cover that product. Put differently, if you produce a product that would infringe one of your patents, you must mark that product with the patent number. But what should a patent owner do if their product covers only a portion of a patented claim? Because software often covers only a portion of a patented claim, this article examines the patent marking requirement in that context and recommends best practices.The Patent Marking RequirementThe Patent Act requires that patentees put the world on notice that their products are covered by a given patent:Patentees, and persons making, offering for sale, or selling within the UnitedStatesany patented article for or under them, or importing any patented article into the UnitedStates, 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 . . .35 U.S.C. § 287(a). Although this is written with permissive language ("may give notice"), the penalty for not marking is a strict limitation on later damages: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.35 U.S.C. § 287(a). In other words, if you fail to mark your product, then you cannot accrue damages until the moment the defendant became aware of the infringement (typically by written notice or filing a complaint). As a result, nearly every product bears a patent marking of some kind that either lists the numbers of patents that cover the product or provides a link to a website that does the same.This marking requirement advances of the Patent Act: "to promote the progress of science and useful arts[.]" Constitution, Art. I § 8. Specificall

natural law). As with the relationship between heat and pressure in Hypothetical 1 and between ocean temperature and hurricane intensity in Hypothetical 2, the relationship between BRCA gene mutations and disease is a natural phenomenon that can be (and has been) exploited for human benefit. Note that this application of the consequences of genetic analysis does not involve nor require any rights to the underlying gene to be expropriated, which was at least the apparent basis for the challenge to "gene patents" that resulted in the Myriad decision (see, e.g., Contreras, 2021, The Genome Defense).What this assessment indicates is that the Court at this time has decided that claims that so intimately implicate fundamental biological laws (particularly but not exclusively involving human biology) should be restricted in scope. There is precedent for this legal distinction already in U.S. patent law, specifically in the differential treatment of medical (especially surgical) methods under 35 U.S.C. § 287(c). There are certainly arguments to be made why this is unnecessary for any fundamental legal or moral principle and, indeed, may be contrary to such principles, insofar as the recent Supreme Court decisions have impeded development of genetically based diagnostic tests. But relying on the inconsistencies of these decisions with earlier Supreme Court precedent seems to miss the more fundamental fact that the Court does not appreciate there to be any such inconsistency and indeed believes these decisions to be entirely consistent with its role in cabining Congress's subject matter eligibility within proper constitutional grounds in order to promote progress.These considerations explain to some degree the Court's refusals to grant certiorari in the many Federal Circuit decisions applying the Court's subject matter eligibility framework to diagnostic method claims. They also suggest that the Court's next foray into questions involving scope of biologically related patent claims, the upcomi

The ’933 Patent claims an ornamental design for a two-sided face washing brush. In its original pleading, Blackbird made no mention of its compliance (or non-compliance, for that matter) with the marking statute, 35 U.S.C. § 287. When challenged by Argento with a motion to dismiss the complaint to the extent Blackbird sought pre-suit damages, Blackbird filed an amended complaint, adding but a single sentence: “[a]ll marking requirements under 35 U.S.C. § 287 have been complied with.”

Defendants argued that there was no relevance to their “first awareness” of the patents-in-suit because SVL failed to mark its patents, and therefore damages only accrued on actual notice of infringement. Id. at *2 (citing 35U.S.C. §287(a)). SVL responded that its request was relevant because SVL alleged willful infringement, which may lead to enhanced damages.

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.35 U.S.C. § 287(a) (emphasis added).Case LawSeveral courts have considered whether a failure to mark cuts off pre-suit damages even where the patentee previously complied with the marking statute and found that it does.This issue was squarely addressed in Horatio Wash. Depot Techs. LLC v. Tolmar Inc., Civil Action No. 17-1086-LPA (D. Del. Nov. 1, 2018), in which court addressed a fact pattern involving an earlier period of non-compliance with the statute.

Lubby Holdings and Vaporous Technologies (together, Lubby) sued Mr. Chung for infringement of the ’284 patent.Mr. Chung unsuccessfully moved for judgment as a matter of law as to damages, contending that Lubby did not prove that it satisfied 35 U.S.C. § 287’s marking requirement. The jury found Mr. Chung personally liable for direct infringement of the ’284 patent.Mr.

The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances. 34. 35 U.S.C. § 287(a): 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 by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.

Thus, it seems that the Federal Circuit’s precedent is in tension with the plain language of the statute.Lubby Holdings LLC v. Chung, 2021 WL 3889816, 2019-2286 (Fed. Circ. 2021); 35 U.S.C. § 287(a).Lubby, at 5 (dissent).Id.Lubby, at 4.Personal Vaporizer, U.S. Pat. No. 9,750,284 (issued May 9, 2017).

Lubby sued Chung for infringement of the ʼ284 patent. The day before trial, Lubby disclosed its damages computation under FRCP 26(a)(1)(A)(iii) to which Chung immediately objected and questioned whether Lubby’s products were properly marked as required by 35 U.S.C. § 287. More specifically, in an attempt to prevent Lubby from relying on the constructive notice (patent marking) portion of § 287 (i.e., (1) in the paragraph above) for its damages calculation, Chung identified a particular vape pen product on Lubby’s website as lacking the patent number.