June/July 2010 / Features
Use Caution When Marking Products With Method Patent Numbers
Marking products with a patent number constitutes constructive notice of a patent. For products without such marking, infringement damages are limited to the period after actual notice has been received by the infringer. However, for method patents associated with a product this limitation does not apply.
Nonetheless, the author says, there are good reasons to mark the product. The mark may preclude litigation costs that even “innocent” infringement will generate.
But the patentee must be careful not to run afoul of the false marking provisions of the U.S. patent law. Penalties can be as high as $500 per marked item. Moreover, these cases can be brought by third party plaintiffs, by way of qui tam actions. This can be fertile ground, the author notes, for so-called marking trolls. Pending patent reform legislation includes revisions to limit parties who may initiate a false marking lawsuit.
The author analyzes the complex logic inherent in a method patent mark. In the operative section of the patent law (Section 292), method claims are, per se, not construed to “cover” a product. However, the claim can be made defensible by the use of qualifying language that accurately articulates the relationship between the product and the method. To mark or not to mark method patents, the author concludes, is a cost-benefit decision.