The America Invents Act 2011: US Marking Requirements and Pitfalls

In this, the third and final article in a series which PatLit commissioned from leading US intellectual property practice Faegre & Benson on the recently-enacted America Invents Act (AIA), Victor Jonas and Jason Kraus update readers on the changes made by the AIA to the controversial 'patent marking' provisions of US patent law:

"There are generally no legal requirements in European countries to mark a product with a patent number, though the US requires patent marking in certain circumstances, and both European countries and the US impose penalties for improperly indicating that unpatented products are so-protected. The America Invents Act 2011 (“AIA”) makes several changes to US marking requirements as well as the conditions under which penalties for “false marking” arise.

More flexible marking practices

With respect to marking requirements in the US, 35 U.S.C. §287 places limitations on the damages recoverable to a patentee in the absence of patent marking. In particular, a patentee claiming infringement of a claim to a “patented article” must mark that article with the patent number in order to receive damages for up to six years of past infringement – in the absence of such marking, the patentee can only expect to recover damages after actual notice of the infringement is given to the infringer. Prior to enactment of the AIA, US law required the patentee to mark the patent number on the product itself or, when impractical, to a package or label. While the patented article must still be marked, under the newly revised §287, patentees are allowed to mark patented articles with a website that lists one or more patents on the patented article. Specifically, the patentee must mark the patented article with the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet – accessible to the public without charge – that associates the patented article with the number of the patent. Thus, it is reasonable to assume that a patentee could mark all their products with the same marking and then break out which products are believed to be covered by which patents; although court decisions will still be needed to provide guidance on whether a specific marking practice is adequate. 

False marking claim curtailment 

Prior to enactment of the AIA, a rash of false marking law suits had been filed in the US, particularly for marking products with expired patents. These suits followed closely on the heels of the Federal Circuit's decision in Forest Group, Inc. v Bon Tool Co. (Fed. Cir. 2009) that a false marker could be fined $500 per article marked. While previously 35 U.S.C. §292 provided that any member of the public was able to bring such a claim of false marking, the AIA has amended the law to require that the US government bring suit for the civil penalty or that any other plaintiff must have suffered commercial harm and be limited to recovery of damages adequate to compensate for that harm. The AIA also eliminates a finding false marking based on marking with an expired patent that covered the marked product prior to expiration".

The two earlier articles in this series are

• America Invents: what do litigators need to know? here
• America Invents Act: New Opportunities for Challenging the Validity of US Patents here