Guest post by Paul Morgan
Recent patent legislation has removed almost all of the prior dangers of miss-marking products with patent numbers, including fully removing any risk of leaving expired patent numbers on products. (The new 35 U.S.C. § 292 is reproduced below). Yet the significant potential advantages for infringement damages recovery by marking products under 35 U.S.C. § 287, etc., remain. Patent owners who do not mark their products are prevented by §287 from recovering any damages for any of the infringements occurring prior to serving an actual, specific, notice of infringement, or bringing suit. (As a caveat, products that only "use" a patented process need not be marked under §287).
Also, marking can aid assertions of "willful" infringement – resulting in enhanced damages. Likewise, marking has the potential of aiding in establishing "inducing" infringement assertions.
Under the new statute, "virtual" marking can now be used which is easily maintained or changed and does not require product mold or tooling changes.
So, now is the time for client counseling on the reconsideration of patent marking policies by many companies. Especially those companies that had previously marked some of their products but had stopped due to the recent plague of costly mass-marking-trolls-litigation, now ended by the AIA.
Note: Of course deliberately or recklessly marking a product with a patent number that does not apply to any part of that product is still unwise. It can be potentially indirectly prejudicial for patent enforcement, FTC complaints, etc., even if competitors, or the government, cannot prove any actual damages occurred from that kind of deliberate miss-marking.
35 U.S.C. 292
(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words "patent," "patentee," or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public - Shall be fined not more than $500 for every such offense. Only the United States may sue for the penalty authorized by this subsection.
(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.
(c) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.