Field of Endeavor

As a patent attorney in any of a country, it is believed that it never is a seldom experience to be queried with issues or questions about patent marking.  We would like to discuss various aspects about this topic in this issue.

Background Statement

It is interesting to know something through comparisons of provisions of two countries.  Instead of being interesting, a lot of principles and concepts can be derived and ascertained therethrough.  We are planning to do so by citing articles and practices in Taiwan and the US to proceed to remaining contents of this article.

Article 79 of the Taiwan Patent Law stipulates that “an invention patentee shall mark on patented article or its package the patent number, may require licensee or compulsory licensee to so do, and shall not claim damages in failure to affix a mark, provided that this shall not apply if the infringer knows or it may be proved that the infringer could know the article is patented.”  From this article, we know:

1. The one who shall mark: It is the patentee who, however, may require licensee or compulsory licensee to do so;

2. Where the mark shall be put: It is on patented article or its package.  It is believed that a label or tag affixed to the patented article can work;

3. What shall be marked: It is the patent number which is legally required and will be dealt with more hereinafter;

4. Result of failure: No damages shall be claimed unless it has been shown that the infringer knows or could know the article is patented.

It is interesting to become noticed that the provision relating to false patent marking is deleted in the new Patent Law intended to be effective from July 1, 2004 with the recognition that such false action can be pursued through criminal code, civil code, unfair competition law...etc..

Whereas, 35USC§287(a) stipulates that “patentee, and persons making, offering for sale, or selling within the United States any patented article for or under them or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.  In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.  Filing of an action for infringement shall constitute such notice.”  From this provision, we know in the US:

1. The one who is to mark: It is the patentee or the person practicing the patent.  It is believed that the person, except the patentee, who practices the patent is not so much different from a licensee under the Taiwan Patent Law.  There is, however, a difference between laws in Taiwan and the US in this connection.  In the US law, such person “may” give notice to the public while such person “shall” mark under Taiwan Patent Law.  Why does there exist such difference?  What are differences between them?  Since it would appear from the above provisions that the results for failure to mark in Taiwan and the US are nearly the same, it would seem to be hard for us to answer the above two questions.  Nevertheless, we must try before it is declared we fail.  Our trial proceeds through the following analyses and reasoning:

A. The word “shall” is normally referred to something having something to do with punishment or disadvantage occurring to someone who does not act as required while the word “may” is normally referred to something being optional to the relevant party;

B. If the above is correct, which appears to be so, since the resulting punishment or disadvantage of two respective articles are nearly the same, it would appear that possessing a patent right in Taiwan will ensue an obligation to the public, which if not performed, the possessed patent right will be rebated while under the US philosophy, to mark is a prerequisite for a patentee to enjoy his patent rights.

C. Specifically, in Taiwan, failing to mark is a violation of the law although such violation will incur no diverse legal effect in addition to the above resulting punishment or disadvantage.  Whereas under the US law, failure to mark relates to nothing about law violation.  Instead, it is the freedom of the patentee not to mark as long as it is prepared not to collect damages available under the law;

D. Accordingly, although the superficial resulting punishment or disadvantage occurring to the patentee will be the same either under the US law or in Taiwan law, it appears that the different legal effects involved in through the selective use of “shall” and “may” are those relating to whether or not the patentee is a law-violator?

2. Where the mark shall be put: It is still on patented article or its package.  Nevertheless, the US law makes the following clear:

A. The package can contain one or more of patented articles so that they can common satisfy the law requirements through a single notice on a sole package; and

B. In special cases, a label affixed to the patented article or the package can work;

3. What shall be marked: The US requires the word “patent” or the abbreviation “pat.”, together with the number of the patent while Taiwan only requires the patent number.  Nevertheless, it is believed that what is legally required is the same in both countries in that only a number will not give a clear image to any a viewer what the number consisting of a plurality of pure digits is?  As long as the word patent is shown in Chinese, the requirements imposed under the US will be met at the same time.  Such observation will become even more true through the provision under the US law that a label will function if “containing a like notice.”  There comes the question that what is meant by “a like notice”?  It would mean that “patent” or “pat.” plus the patent number are merely an illustration of the marking requirement under the US law.  Accordingly, any other means capable of serving the same purpose as contemplated in the provision will equally function;

4. Result of failure: It remains the same that no damages shall be claimed unless it has been shown that the infringer knows or could know the article is patented.  Nonetheless, the US law makes the following clear:

A. In such event, damages may be recovered only for infringement occurring after such notice;

B. Filing of an action for infringement shall constitute such notice.

In contrast with the deletion of relevant articles in Taiwan law, the US law keeps the false marking provisions as follows: 35USC§292(a) stipulates that “whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or

Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing that the same is patented, for the purpose of deceiving the public; or

Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public---

Shall be fined not more than $500 for every such offense.”  Through the above provisions, we know:

1. False marker: Any person marks, affixes or uses something without the consent of the patentee;

2. Marking place: On, in or to an article made, used, offered for sale, sold or imported;

3. False categories:

A. First category: There is a patentee;

B. Second category: There is not a patentee or the involved article has nothing to do with a patent;

C. Third category: The false marker only mentions that there is a pending patent application but the fact is that:

a. There is no application for patent has been made; or

b. If made, it is no more pending;

4. False channels: The name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like.  It is interesting to note that there are three major channels, i.e. name, number and the word relevant to “patent.”  From what are expressly provided in the provision, it is clear that there are variations in the first and third categories.  It would be more interesting to ask whether there exists the possibility that there also are variations for the patent number?  We would like to provide answers from our own viewpoint to be positive.  For example, we can label 4,999,999 as ‘999;

5. Subjective requirement: The false marker has the intent of:

A. Counterfeiting or imitating the mark of the patentee; or

B. Deceiving the public and inducing them to believe that he is with the consent of the patentee;

6. Legal effect: The false marker shall be fined not more than $500 for every such offense.  If a same batch of falsely marked products qualifies as “every” such offense, it would appear to be very cheap for a wrongdoing action.  Accordingly, it would seem that each of the same batch of relevant products is qualified as “every” such offense.  Another possible question from a wrongdoer comes that if every single piece of article costs such high that 500 is nothing, what other disadvantages he has through such wrongdoing if the involved false category is the second or third one rather than the first one?  It is believed that in addition to being a moral question in itself, there should be other statutes (e.g. those like those above-mentioned under the Taiwan practice) for regulating such disorder.

Through the above discussions, one might feel that the above provisions might have dealt with issues regarding patent marking with a properly extensive coverage.  Nevertheless, theory and practice not only will interact with each other but also will seldom coincide with each other all the time.  Accordingly, this article would be devoted to deal with some issues, which have not been touched in the above in an attempt that all possible and potential questions with respect to the patent marking we can imagine and we have been consulted in the past can be fully or partly answered, discussed or analyzed in a way that any such question has been answered or might be dealt with or answered through a potential guide derivable from such answers, discussions or analyses.

Summary of Developments

According to the statute, if the patented article is not marked, the infringer must receive actual notice of infringement before an infringement action claiming damages is initiated to be successful.  Here comes the first question which we would like to discuss, that is, can a patentee pursue an infringement if it fails to properly mark a patented article? 

Nevertheless, as is known, it is insufficient that letters merely offers a license under a patent, encloses copies of patents, or states one of several patents is believed to be infringed but not identifies which patent is infringed.  Refac Electronics Corp. v. A & B Beacon Business Machines Corp., 695 F. Supp. 753, 755 (S.D.N.Y. 1988).  Accordingly, a warning letter issued to the infringer is satisfied only if it actually states that infringement of a specific patent is occurring.  Here comes the second question we have, i.e. why the fact that the patented article is marked has the same effect with that that the infringer receives the actual notice?

A patent containing only claims for a method or process is not subject to the marking requirements as there is no article to be marked.  Bandag, Inc. v. Gerrard Tire Co., 750 F.2d 903 (Fed. Cir. 1984).  Here comes the third question we have, i.e. if a process will result in a product, need this product be marked? 

If a patent has a combination of claims, including both apparatus and method or process claims, the apparatus must still comply with the marking requirements to preserve damages on infringement of the method claims.  American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993).  Here comes our fourth question, i.e. if the patent includes a combination of apparatus and method claims, is there a possibility that no mark is required for successfully claiming damages with method claims being infringed?

The duty to mark must be enforced by the patent holder who must ensure that his licensees also mark the product with the patent number.  Devices for Medicine, Inc. v, Boehi, 822 F.2d 1062, 1066, 3 USPQ.2d 1288, 1292 (Fed. Cir. 1987)  A licensee who fails to mark is an infringer.  5 Donald S. Chisum, Patents: A treatise on the Law of Patentability, validity and Infringement § 20.03[7](c)[ii]  From these viewpoints, it would appear that patent marking is an unconditional prerequisite for enjoying any kinds of patent rights or avoiding from losing patent rights, which, however, presents different opinions from what are discussed in the background statement.  Accordingly, there are two possibilities:

1. These viewpoints are more correct and convincing than what are analyzed in the background statement above; or

2. Those in the background statement are more persuasive than these viewpoints.  In this article, this possibility is assumed.

The mark must be clear and legible to the naked eye so that a person is put on notice of the patent.  Trussel Mfg. Co. v. Wilson Jones Co., 10 USPQ 47, 50 (2d Cir. 1931).  Whereas the placement of mark on inside wall of equipment is permissible because if the mark had been placed on the outside wall, it would have become time-worn and illegible.  Sheilds-Jetco, Inc. v. Torti, 314 F. Supp. 1292, 166 USPQ 397, 406 (D.R.I. 1970)  Many courts require a showing that it is physically impossible to mark the product before the court will permit marking of the packaging.  Rutherford v. Trim-Tex, Inc., 803 F. Supp. 159, 163, 25 USPQ.2d 1866, 1870 (1992)  This restriction may be more lenient when the mark may disfigure the product.  Wayne-Gossard Corp. v. Sondra Mfg. Inc., 579 F.2d 41, 43, 200 USPQ 11, 12 (3d Cir. 1978)  Here comes our fifth question, i.e. can the marking be such made that it can be identified only by a magnifying glass or the like?

Patented items may also be marked with a list of patent numbers and a statement that the patented item is covered by one or more of these patents.  Chicago Pneumatic Tool Co. v. Hughes Tool Co., 192 F.2d 620, 622, 91 USPQ 227, 231 (10^th Cir. 1951)  It would appear from such teaching and/or ruling that:

1. It is not so important that which specific patent number is identified for a patented item or article; 

2. Instead, what is important is that the patent marker has made it clear that the patented item or article is protected by at least one of a set of patent numbers;

3. Also, it is unimportant to make it known that the patented item or article is protected by which many or exact patents out of the set of patent numbers.

Here comes our sixth question, i.e. if it is not important for the patent marker to make it clear how many patents are involved in the patented article or item, is it important that the patent number is made clear in the patent marking?

With respect to actual notice, the notice must allege infringement and inform the infringer which specific patent is infringed.  Amsteadlndus., 24 F.3d at 187, 30 USPQ.2d at 1469.  Here comes our seventh question, i.e. if it is unimportant in the patent marking to identify which specific patent is referred to, is it really important and/or compulsory that which specific patent should be identified in the actual notice?

Liability, in the absence of marking, is based on the patent holder’s notice to the infringer, not on the knowledge of the infrnger.  American Medial Sys., 794 F.Supp. at 1392, 26 USPQ.2d at 1096.  By this we know, if the product is not marked, the infringer is not liable for damages until the patent holder actually notifies him of the patent.  Specifically, this situation will not change even if the infringer had actual knowledge of the patent at the time he copied the patented articles.  Here comes the eighth question, can any one tell that under the situation that the product is not marked, which one of provisions that the infringer is not liable for damages without an actual notice and that the infringer is liable for damages with an actual knowledge of the patent is better?

In American Medical Systems Inc. v. Medical Engineering Corp. (CAFC 1993) 28 USPQ.2d 1321, the district court concluded that American Medical Systems was “obligated to have marked all [products] subsequent to the issue [issuance] of the patent except that it is allowed a relatively small number to be shipped unmarked as it readies the marking process.”  Because it had shipped more than a de minimis number of products after the patent issued without the requisite marking, it failed to comply with the mechanism set forth in 35 USC §287(a).  Here comes our ninth question, i.e. will the patentee fail to comply with the statute if he does not immediately mark its product after the issuance of the patent?  Also, there comes the tenth question, i.e. after knowing failure of the compliance with the law, can the patentee cure the defect by means of simply marking the patented product immediately?

Objects of the present article are to deal with inter alia questions outlined above or below in an attempt that any of potential issues regarding patent marking is either touched or discussed here or hinted or somehow dealt with hereinbefore and/or hereinafter without failure.

Brief Items to be Discussed for Presenting Issues We Concern

* Can a patentee pursue an infringement if it fails to properly mark a patented article?

* Why the fact that the patented article is marked has the same effect with that that the infringer receives the actual notice?

* If a process will result in a product, need this product be marked?

* If the patent includes a combination of apparatus and method claims, is there a possibility that no mark is required for successfully claiming damages with method claims being infringed?

* Can the marking be such made that it can be identified only by a magnifying glass or the like?

* If it is not important for the patent marker to make it clear how many patents are involved in the patented article or item, is it important that the patent number is made clear in the patent marking?

* If it is unimportant in the patent marking to identify which specific patent is referred to, is it really important and/or compulsory that which specific patent should be identified in the actual notice?

* Can any one tell that under the situation that the product is not marked, which one of provisions that the infringer is not liable for damages without an actual notice and that the infringer is liable for damages with an actual knowledge of the patent is better?

* Will the patentee fail to comply with the statute if he does not immediately mark its product after the issuance of the patent?

* After knowing failure of the compliance with the law, can the patentee cure the defect by means of simply marking the patented product immediately?

Detailed Analyses

* Can a patentee pursue an infringement if it fails to properly mark a patented article?

From the relevant clause in the statute that “in the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement,” we can know that:

1. Patent rights are composed of many rights including, e.g. a right to take a legal action, a right to enjoy damages…etc.;

2. There are many right contents or component rights involved in an action for infringement, including an injunction to prevent an infringer from manufacturing, using, importing or selling the patented product, claiming damages;

3. In the event of failure to so mark, what is resulting therefrom is ‘no damages shall be recovered by the patentee’ without harming the rights of initiating an action for infringement.  Accordingly, we have found out the answer for this question that even if the patentee fails to properly mark a patented article, the patentee can still pursue an infringement through losing the rights of seeking recovering damages.  Specifically, failure to mark the patented product does not affect the enforceability of the patent.

* Why the fact that the patented article is marked has the same effect with that that the infringer receives the actual notice?

The statute might be a provision setting forth what is felt right or good in the mind of the lawmakers, what is generally believed in or desired by the public…etc..  Specifically, with respect to patent marking, as long as the patented article is marked:

1. Any potential infringer will be assumed to receive the actual notice of the existence of the patent;

2. The above assumption will not change even if any potential infringer can prove to satisfaction that it does not actually notice the existence of the patent.

As cited in the above, however, the US precedent has made it clear that the actual notice can be met only when a specific patent number is identified.  If under the actual notice, a specific patent number is required to be shown to the infringer:

1. Why a really innocent infringer cannot escape its liability under a patent marking situation?  The simplest answer to this question is that this is what the law provides.  Is this a good answer?  We might have some quasi-complaints in the part of Claims of this article, which might be valuable for those who are unhappy with the situation this item raises and are willing to safeguard or strive for possible rights for coping with such situation.

2. Why can we have a settled mind that once there is a patent marking, all potential infringers must have known a relevant article has been patented?  It would appear that this question is not much different from the preceding one in respect of difficulties to be answered.  Nevertheless, from the viewpoints of safeguarding/overturning the law-ruling society, we can advocate (AD)/antagonize (AN) the position of the law from the following points:

A. AD: If what is provided in the law has been the most objective, fair and justified from the cleverness of the human being, such provision shall be maintained at the best of the society.  AN: If what is provided in the law cannot be overwhelmingly ascertained to be the best, any possible provision to this effect shall become effective only after it is figured out by the humane society;

B. AD: After such practice required by the provision has gradually become popular and popular, especially through some famous tragic stories, the public, or at least the interested persons, will get well-educated what the meaning of law is.  When that time comes, there will be no more innocent infringer since it is quite possible that all persons desiring to produce any article will first check whether he will infringe some patent.  AN: In a free civilized society, a person should not be interfered too much for his behavior.  Before the ideal society comes true, how many tragic stories will happen?  Is it because since there are so many sorrows in the world, it is unimportant or worthy that some tragic stories serve as the background for constructing the ideal society?  Will it be beneficial or fair to the world that the price of building the law practice through the helps of possible tragic matters will outweigh that of possible disorder through no statutory provision in respect of relevant actions?

C. AD: As soon as the marketed product is marked, any potential infringer will get known to that such product is protected by patent so that he will not mistakenly decide to conduct an infringing action because normally an infringer will manufacture an infringing article only after he becomes known to the existence of the patented article.  AN: It is never perfectly true for such allegations in that:

a. It is untrue that as soon as the product is marked, all potential infringers will have really known to the fact that a product embodying a specific technique has been patented since it is quite possible that some infringers by chance have figured out the product embodying just the same specific technique without any knowledge of the involved patent;

b. It is also untrue that as soon as the marked product is marketed, any person in a specific country will immediately get known to the existence of the product.  Or even if the existence of the product has been got known to the person, the existence of the relevant patent will naturally get known to that person.

D. Perhaps, we should not go into any further details in order that we will not lose our faith in the law.

3. Why can we have a peaceful mood that once there is a patent marking, the possible infringer will not only suspect or imagine an involved article embodying some concept it has in his mind is possibly infringing but also it can identify properly which patent is protecting the concept embodied in the article?  As mentioned above, different people on earth might conceive the same thing at the same or different time without knowing or communicating with each other.  As such, why a person, which will be named as an infringer somehow, must know an article embodying some concept is possibly infringing simply because there exists a fact that it happens there is on earth a similar article unknown to him on which a patent marking is made?  Even if the person has the opportunity to know or even operate the patented marked product, why it becomes necessary for him or her to properly identify a specific patent protecting the concept an article has?

Why should the law be abided by if it sounds unjustified?  There is a Chinese saying that “a bad law is a law” by which one should abide until the bad law is repealed or amended.  Since it appears hard to negate such proposition, we would like to stop here.  Even if it is possible to do so, it will be very lengthy and not be so much related to the present topic so that the best policy is to stop here.