How do you know if your product is covered by a patent?
It can seem like a given premise that you don’t even bother questioning it. After a long journey, you finally get your utility patent approved on your product concept. So now you’re selling the patented product. But, what if your patent does not actually cover your product? How would you be able to tell if your products are actually covered by your patent? It all boils down to the claims.
Are you selling a patented product or not?
With design patents, the comparison is quite simple. Does your product look like the drawings in your design patent? If the design patent drawings contain dashed lines, your product does not need to include the features drawn in broken lines.
Utility patents are trickier. You must drill into each independent claim of a utility patent. In particular, you need to make sure each feature recited in the independent claim is found in your product. If a utility patent has more than one independent claim, your products must be covered by only one of the independent claims.
What are the consequences of patent false marking?
Suppose you mark your products with a patent number, but your products are not actually covered by the patent. According to 35 USC § 102, the statutory penalty is not more than $500 for every offense. An offense does not refer to the total product line. Instead, each offense means that a maximum penalty of $500 can be assessed for each falsely marked product. However, the lower court has discretion to weigh a variety of factors, such as intent to deceive, to determine the amount of the penalty per offense.
Marking a product with an expired patent can no longer serve as the basis for a false marking lawsuit.
Who can bring a false marking lawsuit?
Only the government can bring a false marking lawsuit for statutory damages. Individuals and companies, however, may bring a false marking lawsuit for compensatory damages if they can show a competitive injury suffered as a result of the false marking.
Direct competitors may have less difficulty in showing a competitive injury caused by false marking. For example, causation may be established by a competitor who was prevented from entering the market due to the patents falsely marked on the product.
What are examples of false marking?
While the expiration of a marked patent number will not create liability, other types of false marking can lead to serious liability. For example, here is an illustrative list of false marking examples:
- marking a product with a patent number that does not cover the product
- marking a product as “patent pending” when no patent application has been filed
- marking a product with a patent number without permission from the patent owner
What should licensees of a patented product do to reduce risk of liability?
Patent marking laws apply not only to patent owners, but also to licensees. Patent owners who are licensing their patents must make reasonable efforts to ensure that licenses are following a marking program.
Distributors and authorized sellers should make sure that products sold pursuant to the patent license are actually covered by the licensed patents and properly marked according to the terms of license agreement.
Can a patented product no longer be covered by a patent?
Modifications made to a patented product might potentially remove patent coverage. For example, suppose a claim covers ABC and a product was modified from ABC to BCD. In this hypothetical, there would be no literal infringement of the patent by the modified product BCD since it is missing a required claim element, i.e., A.
A detailed claim comparison can help confirm whether a modified product is still patented or not.
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