Wrong patent mark, deep impact

While marking for patents or trademarks may seem to be an inconsequential matter, an improper mark can have a substantial impact.

For example, the failure either to mark a patented product as patented or to give the patent number can result in the inability to collect damages for an infringement during the pre-notice time period. The loss of damages during that pre-notice period can be substantial and a major factor in resolving patent disputes, deciding how to proceed against an infringer, or how to license.

Ask yourself these questions: 1) When can the patent pending designation be used, and is there any penalty for misuse? 2) When can the patented or a patent number designation be used, and is there any penalty for its misuse? 3) What is the nature of the invention in question? Does it involve a product? A method? An intangible item?

Proper vs. improper use. Beginning with the "pat. pending" designation, it is proper to use the designation on products or advertising relating to a product or process which is covered by a patent application filed in the U.S. Patent and Trademark Office. It is improper either to use the "pat. pending" designation if the application has not been filed or to imply to a third party that a patent application has been filed, when in fact, it has not. Improper marking may be done to deceive the public, to discourage others from offering a similar product, to gain a competitive edge, or to encourage the public to believe that the product/process has unique attributes. Such false marking is prohibited under 35 U.S.C. 292, which also provides for a fine.

Marking with a patent number gives rise to a number of considerations. First, one must have a U.S. patent in order to mark. The marking is to be on the article; if it can't be on the article due to the character of the article, then it should appear on the package for the article or on a related label. Processes and other intangible things are a different problem. This marking is intended to provide notice to the public that the product is patentable.

Unintended results? Failure to mark a patented article will prevent damages from being assessed before an actual notice by a letter or an actual suit. In other words, if there is no marking, damages will begin with actual notice. But before notice, there will be no damages. Thus marking can be very important to the patent owner. (See the Patent Statute 35 U.S.C. 287.)

However, if there is mis-marking that uses a patent number on a non-patented product, there can be problems similar to those with misusing the "pat. pending" designation. Clearly there can be issues under the false marking statute (35 U.S.C. 292), and if the facts suggest that the mis-marking was intentional and for competitive reasons, various anti-competitive and unfair competition laws might be asserted. This scenario is very fact-intensive and may be influenced by the intent behind the marking.

A similar marking statute, 15 U.S.C. 111, is provided in the trademark law. There, a mark registered in the U.S. Patent and Trademark Office can use the "(reg)" symbol, the "Reg. U.S. Patent and Trademark Office," or similar designation. Failure to do so can result in the inability to collect profits and damages in the pre-notice period.

Legal Questions

Q Can the mis-marking of "pat. pending" on a product be easily detected?

A Due to the secrecy of U.S. patent applications in the U.S. Patent and Trademark Office, it is difficult to identify this mis-marking in the initial stages, but such mis-marking and the results thereof may become apparent later, particularly in a later dispute.

Q In the past, numerous patent numbers were listed on one label or nameplate used on several products. Can there be a problem with that practice that could lead to legal action?

A Yes. Arguments can be made that the label is misleading and that there is mis-marking, since some of the patent numbers are applied to products which are not covered by the identified patent. Although the argument can be raised that the right number is on the right product, the practice of the multiple marking of patents has apparently decreased.

Q Does the marking requirement as defined by patent law for damages apply also to method or process patents?

A No. The marking requirements relate to an article, not to a process. The issue is about how one marks a process. Damages are available in the case of a process, since there cannot be marking, but avoid saying the process is covered by a patent, if it is not.

Q Is marking always required according to the patent laws?

A Marking is not required, but failure to mark can lead to costly consequences, such as lost damages.