A recent case from the United States Court of Appeals for the Federal Circuit[i] serves as a warning to patent holders to mark their products as patented when selling them. In essence, a failure to mark a patented article or an article made via a patented process can prevent the patent owner from claiming damage prior to their notifying the infringer of their infringement or filing suit.
35 USC §287 provides an affirmative duty to provide actual or constructive notice to an infringer to obtain damages. In Arctic Cat Inc. v. Bombardier Rec. Prods., the Federal Circuit decided that the patent holder either needed to mark the product as patented or provide actual notice to the alleged infringer in order to satisfy this requirement. 950 F.3d 860 (Fed. Cir. 2020). Historically, the Supreme Court of the United States has said that patent owners have a duty to provide notice, but left it to juries to decide what constitutes notice. In the past, the Federal Circuit has also held that the law focuses on what the patentee does, not what the alleged infringer knows, i.e., that the patent owner has to do something to provide notice to the infringer even, not just to prove the infringer had notice through some means. Proving that the alleged infringer of the patent knew they were infringing is not the kind of notice the Federal Circuit thinks satisfies the statute. Only taking an affirmative step to put the infringer on notice satisfies the requirements of 35 USC §287 according to Arctic Cat.
Interestingly at least one commentator has noted that the Federal Circuit in adopting the requirement that the patent owner affirmatively act to provide notice seems to be relying a case in which the Federal Circuit misquoted the U.S. Supreme Court in Dunlap v. Schofield, 152 U.S. 244, 14 S. Ct. 576 (1894). McKeon, Michael J., The Patent Marking and Notice Statute: A Question of “Fact” or “Act”?, 9 Harv. J. Law & Tec 2 (Summer 1996).
Regardless, patent owners need to actively take steps to preserve their right to pursue damages for infringement. So what does a patent owner need to do exactly? First of all, this requirement does not apply to patent owners who do not make, sell or authorize others to make or sell their patented invention.
In addition, some courts have found that marking the packaging is not sufficient under certain circumstances, so it is best to mark the product itself if at all practical. If it is not practical, then marking the packaging should work.
Moreover, you want to make sure you are marking as many of the goods as possible as some courts have been known to find the patent owner did not satisfy the marking requirement when they only marked a percentage of their goods. That is not to say that one unmarked product will prevent you from recovering damages, but rather effort should be made to mark all products.
Further, the product should be marked as “patented” not “patent pending” – at least one court has held that patent pending does not put potential infringers on notice of your patent rights; after all, “patent pending” and “patent issued” are two different things. Also, the patent number should also be placed on the product so that people can determine what it is you have actually patented.
Last, but certainly not least, those licensing their patent rights to a third party need to include an obligation for the licensee to mark the products they are producing.
None of this means you cannot enforce your patent rights if you have not marked your products effectively. However, to preserve the right to sue for infringing activities conducted before the patent owner was aware of infringing activity, marking the product is an important detail that needs attention.
[i] The United States Court of Appeals for the Federal Circuit is the Court tasked with hearing appeals of all cases involving claims or compulsory counterclaims under patent law.