Northwestern Journal of Technology and Intellectual Property
Strategic Assertions: Evading the Patent Marking Requirement
2014
By Daniel B. Garrie
Failing to mark patented articles as such could limit damages in an infringement suit. But the current state of marking law includes a meaningless distinction between marking requirements for patented articles and marking requirements for articles that are associated with patented methods. This differential treatment creates loopholes for avoiding the consequences of non-marking and degrades the policy objective of requiring marking—providing notice. Congress should act to ensure that patent owners cannot skirt their duty to the public by selecting to associate an inventive article with method patents or claims. Although similar critique has been issued in the past, the continued use of loopholes and conflicting precedent render the issue pertinent today. This Comment surveys the relevant interpretations of the marking statute, the loopholing techniques available to creative patentees, and advocates for a change in the law.
The superfluous distinction that federal courts have drawn between marking requirements for patented articles and marking requirements for articles that are associated with patented methods has been improperly perpetuated and continues to thwart the policy objectives of the Patent Marking Statute. That statute—which requires patentees who make, sell, or offer to sell patented articles within the United States to mark those articles with their associated patent numbers—superficially disregards the need for patentees who make, sell, or offer to sell articles associated with their patented processes to mark. This left the determination of whether a patentee holding a method claim that is associated with an article must mark the article to the courts.
Regrettably, the common law doctrine promulgated in place of clear statutory language leaves the patent-marking requirements for these types of patentees largely in their own hands. The case law dictates that the inquiry into whether or not a patentee must mark is, confusingly, independent of the type of patented invention at issue and dependent on the way in which the patentee chooses to claim that invention within its patent or what claims of infringement the patentee brings to court in litigation. This doctrine has led to exhaustive degradation of the policies that the statute was originally created to enhance.
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