The Importance of the Patent Marking Statute

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Patent marking is a simple concept in a world that is progressively becoming more complicated. In the 1950s, it was simple for Texas Instruments to mark their newly patented transistor radio with “Patent No. 2,892,931.”  A recent trial court decision illuminates the importance of proper compliance with the Patent Marking Statute on a relatively simple device if a patentee wishes to seek pre-litigation infringement damages from a potential infringer of a consumer product patent. This court decision provides a reminder about the importance of patent marking to other patentees selling more complex inventions, such as computers, software, chemicals, and machines.  

A recent trial court decision illuminates the importance of proper compliance with the Patent Marking Statute on a relatively simple device if a patentee wishes to seek pre-litigation infringement damages from a potential infringer of a consumer product patent. This court decision provides a reminder about the importance of patent marking to other patentees selling more complex inventions, such as computers, software, chemicals, and machines.

As provided in the Patent Act, 35 U.S.C. § 287(a), anyone who is making, offering for sale, selling, or importing into the United States, a patented product may give notice to the public that the product is patented by “patent marking” the product.  Marking a product is optional. However, if the product is not marked, or is improperly marked, then damages for infringement prior to giving actual notice of infringement to the alleged infringer may not be recovered by the patentee. In effect, the proper patent marking of a product acts to start the period of time for which infringement damages may be recovered in the absence of actual notice of infringement. It also serves as a warning to potential infringers indicating that the product so marked is protected by at least one active patent. A determination of compliance with the Patent Marking Statute is a finding of fact, and the patentee bears the burden of proving compliance in court as an element of its damages case. 

The Statute in its current iteration provides two means by which a product may be marked. The first method is physically affixing the word “patent” (or the abbreviation “pat.”) together with the number of the patent(s) covering the product directly on the product itself. Placing the patent marking on a product’s packaging is not sufficient, generally speaking. The second method is by affixing, physically on the article, the word “patent” or “pat.” together with a website address. The website on the internet must associate the product with the patent(s) covering the product and access to the website must be free to the public. An exception to the requirement of physical marking on the product is permitted if the character of the product does not permit an actual physical marking on the product. Only in such an event may the notice be affixed to the package that contains the product.

Patents claiming only methods or processes are not subject to the patent marking requirement. Also, a patentee is not required to provide notice when the patentee does not make, sell, import, or permit another to make, sell, or import, an item covered by the patent. In both cases there is nothing “tangible” to mark.   

            A recent order issued by the U.S. District Court for the Central District of California illuminates what happens when the Patent Marking Statute is not properly followed. At issue in this case was compliance with the marking statute as to several mirror lamps sold by the patentee. In Zadro Products, Inc. v. Feit Electric Company, Inc.,[1] Zadro sued Feit for infringing two patents allegedly covering rechargeable LED vanity mirrors. Feit sought a ruling that even if there was liability for infringement, Zadro was not entitled to damages for infringement prior to Zadro giving actual notice of infringement to Feit (by filing the lawsuit), due to Zadro’s non-compliance with the Patent Marking Statute. 

Zadro and Feit agreed that Zadro had sold several models of mirrors that are covered by the claims of at least one of the two patents-in-suit. Feit presented evidence that as many as 85% of the patented vanity mirrors sold by Zadro in 2019 were marked with the phrase “patent pending” molded on the base of the mirror.  Zadro responded that the packaging of the products are clearly marked with the relevant patent number. 

The trial court noted that there is no specific list of factors in the Marking Statute that may be used as a requirement or a guide in determining if the “character” of the product – in this case vanity mirrors – prevents them from being physically marked with a proper notice.  However, Feit demonstrated that Zadro’s products are more than capable of being marked properly. 

The trial court made two important findings. First, the court found that if a product can be marked with the phrase “patent pending” then the product can be marked properly to fully comply with the Statute. Second, the court found that the term “patent pending” itself was not proper marking under the Statute. “Patent pending,” according to the court, indicates a patent associated with the product has not yet issued. Therefore, by continuing to mark the patented product with “patent pending,” the patentee is suggesting to the public that the product is not yet protected by a patent.  

Zadro’s argument that its marking on the packaging provided sufficient constructive notice of the patent to the public as intended by the Patent Marking Statute was rejected as contrary to well-settled case law as well as the plain language of the Section 287(a). The court’s job is to apply clear statutory language, and not to determine the intent of that language. The trial court found that Zadro simply did not comply with the plain text of the Statute. The court also found that since the Zadro mirrors were marked with “patent pending,” the same products could also have been marked with the patent notice markings required by the Statute. 

Zadro also argued that marking on the packaging was appropriate because the products were mainly used out of the “public view,” that is, in the privacy of a home. The district court disagreed, noting that products that are in the home are not out of “public view.” Furthermore, Zadro merely marking the packaging would be ineffective notice because the packaging would be removed in the usual course, and the patent-protected product would be viewed long after its packaging was unavailable. 

As a result of its failure to comply with the plain words of the Patent Marking Statute, Zadro was denied the right to seek pre-notice infringement damages (that is, damages for infringing sales before the date of filing the lawsuit).  Within six weeks of the trial court’s ruling, Zadro dismissed its infringement case against Feit, but not before the parties had spent considerable sums of money litigating the case over the course of a year, including extensive discovery, claim construction, and motion practice. Had Zadro realistically evaluated the consequences of its failure to comply with the Patent Marking Statute, perhaps the lawsuit would not ever have been filed.

Best Practices Tips

            This case highlights four important lessons that any patentee, either as a producer or a licensor, should take care to observe if producing (or licensing the production of) a physical product protected by a patent:

1.    A patentee, if it wishes to be able to seek pre-suit damages for infringement, should ensure that its product strictly complies with the letter of the Patent Marking Statute. That is, unless by the character of the product that compliance cannot be literally met, the product protected by a patent should be marked with “patent” or “pat.” and either the patent number(s) or a website address directing an internet user to a website that explains the association of the patent number(s) and the protected product. The website may contain a chart of patents and the products they cover, and the chart should be updated whenever a new patent U.S. patent is granted, or whenever a new product is introduced.

2.    A patentee, if currently producing a product with the notice “patent pending” physically marked on it, should as soon as patent protection is obtained, change the notice to one that complies with the Patent Marking Statute.

3.    The Patent Marking Statute is intended to provide notice to potential infringers of a patented product. Any benefit obtained by marking packaging with notice of patent protection in the form of consumer notice or education is secondary but outside the purview of the benefit of the Patent Marking Statue. 

4.    If there is any question about proper compliance with the Patent Marking Statute or setting up a program to audit or establish a compliant marking program, a patentee should promptly seek advice of counsel so as to avoid forfeiture of pre-suit damages that the patentee may be entitled to if infringement is later discovered.