Meet James Brazeal, manager at the Office of Technology Transfer at the University of Missouri–Kansas City. The Office of Technology Transfer helps university inventors protect their intellectual property and explore their inventions’ commercial potential.
For more information about protecting your intellectual property, visit "Protect Your Intellectual Property."
One question that often comes up when I speak with technology startup companies is this: When and why should products be marked to let others know that a patent application has been filed or a patent has been issued?
Below is a list of the different types of markings and some of the advantages and risks in marking, or falsely marking, products.
Most markings on products with issued patents are designed to give constructive notice to the public that the item bearing the mark has been patented.
Under 35 U.S.C. 287 (a), this constructive notice is critical for patent holders who would ever hope to recover any damages from infringing activities that occur after the patent issues, but before the patent holder can deliver actual notice—such as a cease and desist letter or the filing of an infringement suit—to the infringers.
Another advantage of marking products is that the markings can help to prove “willful” infringement, which can allow the patent holder to recover enhanced damages. Directions for correctly marking products are given in 35 U.S.C. 287.
Many times you will see products marked with the term “Patent Pending.” This marking is used by manufacturing companies for many different reasons:
- Notice at time of issuance: If an item is marked as “Patent Pending,” it is not considered constructive notice to possible infringers, but it could be argued (most likely unsuccessfully) that the infringer had notice that they would be infringing once the patent issues, although actual notice should be delivered, and the pending marking should be changed to the issued patent marking.
- Marketing: Many manufacturers mark products “Patent Pending” as a marketing tool to make their product seem more state of the art or cutting edge.
- Discourage competition: Some manufacturers use the term “Patent Pending” in an attempt to discourage competitors from entering the market or copying the product for fear of possible infringement.
You can use a patent pending notice on a product or marketing materials related to the product as long as you have a patent application pending with the United States Patent and Trademark Office (USPTO). The patent pending period starts the day a patent application (provisional, or non-provisional) is filed with the USPTO and ends on the day that a patent is either granted, or the patent application is abandoned.
U.S. patent law also provides a penalty for falsely marking a product. This applies to falsely marking products as “Patent Pending” or as having an issued patent.
False marking with intent to deceive the public can result in a fine of up to $500 for each offense. The section of the Patent Act dealing with False Markings (35 U.S.C. 292) was recently modified with the passage of the America Invents Acts to allow for “virtual” markings, which can be much more easily maintained and changed.
In an effort to eliminate the “patent trolls” that were filing false marking suits and making it riskier to mark all products, this section was also modified in regards to who has standing to sue for false markings.
As in most cases, if you have additional questions or are in doubt about patent markings, please contact your patent attorney.
All information in this article is offered solely as informal general information, and is not given as legal advice, nor is meant as a definitive answer to any particular legal problem.