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Beware of the Falsely Patent Marking Boogey Man

Within the past 18 months, a cottage industry has started to emerge.  This disruptive industry exists to sue companies for allegedly mismarking products or packaging with expired or incorrect patent numbers. Importantly to the readers of BONEZONE, the reach of these “entrepreneurs” has touched the orthopaedic world, with Biomet being served with a complaint alleging that they had falsely marked some of their implants. (See Tex Pat, LLC v. LVB Acquisition, Inc., Biomet, Inc. et al. filed July 19, 2010.)

Before we address false patent marking and the impact of recent Court decisions on who can sue and how much they can collect if they win, a brief review of the patent marking statue and your obligation as a patent holder is necessary. 

The patent marking statute is entitled “Limitation on Damages and Other Remedies; Marking and Notice” and is found in §287(a) of the Patent Law. The law states that a patent holder can only recover damages from the time that the infringer was given notice of the existence of the patent.  There are several recognized ways to provide such notice: the patent holder can send a letter or email to the infringer, or can file an infringement lawsuit naming the person or company as the defendant. 

The most efficient way to give notice of the existence of the patent to the public and a potential infringer is to place the appropriate patent number(s) directly on the product itself from the time it is first produced.  If the product cannot be marked (e.g., too small, geometry does not allow, is too complex, markings cannot be seen, etc.), then the Patent Law allows the patent holder to satisfy the notice requirement by placing on the product packing or on a label affixed to the product the patent number(s) that are relevant and cover the attributes of the product.  Patent holders should be aware that many Courts have determined that placing the patent numbers on product brochures, invoices and other marketing/sales collateral may not be enough to meet the notice requirement for one to collect damages from an infringer.  Therefore, a best practice would be to if the product is of a size and physical nature that would permit you to mark the patent number directly onto the product, then this should be done.  The marking must be of a sufficient size and be positioned in a location that the user can easily see and read it with the naked eye.  Courts have also allowed for the patent number to be placed on the packaging or product labels, but only when a patent holder has been able to show that they would have been unduly burdened with an additional manufacturing step to mark the product that resulted in additional unforeseen production costs.   

The Patent Law provides that the word "patent" or "pat." together with the associated serial number needs to be placed on the product.   Merely marking the product with the word "patented" is not enough.  Products covered by multiple patents are more difficult to mark. Adequate notice for these products can be achieved by a general marking on the packaging of the product or the product itself, indicating that the product is covered by "one or more" of the following patents and then including a list of the relevant patents.   

If your patent application has not issued yet, it is still advisable to mark your product with the words "patent pending."  The “patent pending” designation must be changed immediately once a patent is granted to include the patent number in conjunction with either of the markings "patent" or "pat." 

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