II of II)
* If a process will result in a
product, need this product be marked?
Precedents disclosed above appear to suggest that there is no necessity to have a patent marking if a patent only contains method claims. In order to know whether or why it is correct, we would like to discuss this issue in depth.
Let us quote what the court reasoned in American Medical Systems as follows:
The purpose behind the marking statute is to encourage the patentee to give notice to the public of the patent. The reason the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of section 287(a).
From the above quotation, we know that:
1. The marking statute is merely to encourage giving notice to the public. Such precise wording has been substantiated by our discussions above that although failure to mark will lose the rights to claim damages, it does not harm other rights a patentee can take according to the applicable laws;
2. ˇ§The reason the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark.ˇ¨ We will analyze this sentence as follows:
A. Normally, the marking statute does not apply to method claims. That is, for a patent of method claims, the applicant is not bound by the marking statute;
B. The reason is that normally, where the patent claims are directed to only a method or process, there is nothing to mark. Specifically, through the use of the word ˇ§only,ˇ¨ it is referring that what is involved in such method or process is the manipulating step or procedure for completing a process-directed task and is irrelevant to a product;
C. The following questions come and need be discussed:
a. What is meant by that a process is irrelevant to a product? A method for operating a machine or computer in a way different from a conventional one should be so categorized in that no change will be present in the result. What are the answers to the following questions: if there is a product coming out of machine using the new or patented operating procedure for the machine:
i. The efficiency of the machine is improved so that the machine can produce more products identical to the prior ones. Since the product in this case does not subject to any change, it is believed that this is also a process-directed model; and
ii. There is a situation that not only the efficiency of the machine is improved, but also the product produced thereby is subject to a change, which is identifiable from the resulting product. Although the patent has nothing to directly do with the product itself, despite the possibility of being categorized as above, we might find reasons to support that this situation shall not be so categorized in that:
(i) The change-identifiable product is resulting from the patented procedure;
(ii) We might have a restless mind if we determine that there is nothing to mark in this situation since it is clear that there is an identifiable product to be marked to enable the product to be conjoined to the patented process;
(iii) We cannot sever the possible or subtle connection between the product and the patented process;
(iv) Accordingly, if some one asserts that a product, which is changed somehow by a process, which, however, is not originally devised to make any change on the product should be marked with the patented process, we would like not to blame or discourage his or her such assertion.
b. What is meant by a process-directed task? For example, a method for doing business should be so categorized. As above-described, it might be safe for us to conclude that a process should be product-free when a patented process will not make any difference to a product, which has already been in existence and might have some connection with the patented process. Accordingly, there come the following discussions:
i. If a machine is used to produce a product and a patented process for operating a machine is involved in without changing the resulting product in any way, it should be clear that the product be not marked.
ii. In this situation, since what is patented is the operating process for the machine, even the machine itself is not changed in any way. Although the operating conditions will bring forth some accompanying operating changes to the machine, the involved changes normally happen in minor or insignificant cooperating aspects with respect to the machine so that the machine itself is generally not changed anyhow. Accordingly, there is no reason for us to mark the machine itself.
iii. Since the patented process resulting product or the patented process operated machine do not subject to any change so that it is unnecessary for either of them to be marked, we cannot find any tangible article to affix the patented notice for such patented process so that it should be correct for us to take that no marking is required for such patented process.
3. Through the above deduction and the reasoning in the above-quoted precedent that ˇ§to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of section 287(a),ˇ¨ we should be able to conclude that if there is something to be marked although the patent claims are directed to only a method or process, the patentee shall mark on either the machine or the product which is closely linked to the patented process in such a manner that the machine or the product itself is so changed by the patented process that it no more the same as one operating or produced without the patented process. The word ˇ§onlyˇ¨ in the sentence that ˇ§the patent claims are directed to only a method or processˇ¨ no more must preclude that the operating machine or the produced product has nothing to do with a patented process in essence.
4. Where the patent contains both apparatus and method claims, it goes without saying that the article protected by the subject matter embodying the apparatus claims need be marked. Nevertheless, we need to discuss again as follows:
A. If the article protected by the apparatus claims has been marked, is it naturally compulsory that there will no more be requirements for the method claims to be marked? We would like to make a reservation here because:
a. Although through unity of invention, an application can only cover a single invention, it is quite possible that in the application claiming both apparatus claims and method claims, the subject matter sought by the method claims is so different from that sought by apparatus claims so that the products embodied by the apparatus claims are different from those embodied by the method claims. Under such situation, need products manufactured according to the method claims be marked for complying with the statutory requirements for methods claims?
b. It is believed that through the above discussions, we have made our position clear that as long as a specific product will reflect on itself the shadow or spirit of method claims, it will be necessary for such specific product to be marked.
c. Although we cannot know whether the court will adopt or accept our position, we do believe that it would appears that what are set forth in the above are logical and would like not to believe otherwise unless persuaded to the contrary.
B. As could be understood from the above, if the apparatus claims in a patent will be embodied in different products, each such product needs to be marked.
C. Accordingly, if method claims in the patent are embodied in plural products, each such product needs be marked also.
5. The above is made based on the fact that there is a product reflecting the existence of method claims. As such, it will be naturally true if the relationship between the process and the product is strengthened, e.g. in the situation that through the operation of the method, there must be resulting therefrom a product, compared to the situation that the patented method claims do not in themselves relate to production of a product but will exhibit their influence or effect on the resulting product, if any. The above position that method claims need be marked on the interlinked product therewith will become truer.
* 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
Although through the above discussions, we might be able to accept that method claims should be marked also at some situations, is it possible that a product embodying the apparatus claims needs not be marked while the patentee is still enjoying the protection of apparatus claims?
We would like to discuss this issue as follows:
1. Do apparatus claims include product claims? Here, it is believed that the term of apparatus claims is something like a metaphysical phrase for denoting a kind of claim type, which is in contrast with the method claims. Specifically, any type of a claim, which is not categorized as a method claim is an apparatus claim.
2. Is it possible that in a patent having both apparatus claims and methods claims, the role of apparatus claims is minor and that of method claims is major? Let us assume there are 20 claims in a patent wherein 19 claims are directed to the method with a last claim read as follows: 20. A product produced according to a method of claim 1 (or any one of claims 1 to 19). Some persons like to regard such claim as a dependent claim since it incorporates therein essential elements of other claims. We, however, would like to consider such claim as an independent claim since A) the subject matters of such claim and the imaginarily existent depended claim are different; and B) such claim can become a pure and indisputable independent claim if the drafter is willing to spend a few seconds to copy full contents of the imaginarily depended claim through a simple operation of the computer. Accordingly, it appears to be unconvincing that an independent claim of a first subject matter will naturally become a dependent claim of a depended claim of a second subject matter simply because the smart human being is desirous of saving some time and keeping the claim text concise. If such product claim is regarded as a dependent claim of a method claim, there will be no obligation to mark the product according to the precedents. Nevertheless, if we take such product claim as an independent one, it should be not controversial that the apparatus claim is only playing a very minor role here where it would be cruel for us to take that if there is no marking in the product, the patentee does not have fulfilled the obligation of patent marking.
3. Is it possible that the product embodying the apparatus claims need not be marked when the role of method claims in the same patent is major or dominant, or the role of apparatus is minor or trivial? As above-described, there should be a room that even if a patent possesses an apparatus claim or apparatus claims, there is no requirement for it to mark the product as long as proper persons will be satisfied that what the apparatus claim plays is so minor or trivial in the patent.
4. Is it possible that since apparatus claims are minor while method claims needs not be marked due to the nature in issue, method claims in a patent both having apparatus claims and method claims will be protected even if no product relating to the patent is marked. If the above reasoning is found convincing, some day in the future there might be a case for which the court so confirms the existence of the exceptional situation as contemplated above.
* Can the marking be such made that
it can be identified only by a magnifying glass or the like?
Since precedents teach that unless it would have become time-worn and illegible or may disfigure the product, the mark must be clear and legible to the naked eye on the product, or on the package if it is physically impossible to mark the product, it is believed that the future precedents, if any, will likewise confirm acceptable if the marking can be identified only by a magnifying glass or the like so long as we can equally solicit the lenient mind of the court in that having a compact size normally is a major concern for any a product nowadays. As such, if a patented product is so tiny that if the patent marking is to be made on the product, it can only be completed by a micro laser inscription, which can only be identified by a magnifying glass or even an electronic microscope, is there anything wrong for such practicing the patent marking? We do not believe this is a problem because the law must change with the tide or the time in order that the human being can happily lead their suitable lives in different periods or eras on earth. As an example, we have well-advanced semiconductor technology and/or techniques, which normally manufacture the thing so powerful but small that it is impractical for us to mark thereon in a manner which complies with the finding of the conventional precedents. Accordingly, it is believed that comparable adjustments to the teaching of past precedents are permissible as long as it is a naturally logical conclusion in the mind of the general public that due to the advancement of the society, such adjustments are reasonable and compulsory.
* 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
It is easily imaginable that a patented item might be protected by several patents so that there may also be marked with a list of patent numbers on the patented item. Nevertheless, according to Chicago Pneumatic Tool Co. v. Hughes Tool Co., alternatively, a statement that the patented item is covered by one or more of these patents can do. It is not ultimately clear why this court so reasons here in that:
1. If the patented item is covered by one or more of some patents, it would mean that a certain of said some patents might not cover the patented item, which is a violation of the law so far as the patent marking is concerned;
2. The scenario should be that a combination or a set of articles are respectively or commonly protected by a list of patents each of which is to protect at least one of said articles so that a piece of said articles is protected by one or more of the listed patents. If this is the real case, we might not be easy to criticize the reasoning of this court;
3. At any rate, right here, where the statement only mentions a patented item is protected by one or more of a list of patent numbers, one cannot definitely or exactly know which one or how many ones of said listed patents are protecting a specific article, which appears not to follow very well the teaching or spirit of 35USCˇ±287(a) which stipulates that for giving notice to the public that the same is patented, one should either fix thereon the word ˇ§patentˇ¨ or the abbreviation ˇ§pat.ˇ¨ together with the number of the patent. We might agree or disagree as follows:
A. The side we agree: The law only requires one show the number of the patent. Since the patentee has prepared a list of patent numbers here by mentioning the patented item is protected by one or more of them so that this requirement has been met;
B. The side we disagree: Normally or frequently, a product is protected by a single patent. Although what the law provides here does not make it a must that the patentee must associate as many patent numbers as the product is really intended to be protected, it is natural that one will understand the statutory provision to represent that the patent number should be marked on the notice so that any third party can easily check the number from the notice, which in turn allows the third party to obtain the patent claims for further ascertaining whether there does exist an infringement?
4. It would appear from the above that it will make more sense for us to take that the patent number should appear on the notice exactly in order that any third party can readily know which patent is concerned by the patentee for the specific product. Accordingly:
A. We cannot list several patent numbers in a notice while only one of them is relevant to the protection of the specific product if there is no particular situation;
B. Normally, if we list several patent numbers on the relevant notice, it would mean that all patent numbers are relevant to the specific product. If this is not the case, the patentee will violate the law;
C. Thus, the loosened notice statement made by Chicago Pneumatic Tool Co. v. Hughes Tool Co. that the patented item is covered by one or more of listed patents should only be applicable when a set of products are involved in where each product is protected by a respective patent number.
5. Accordingly, the question here does not exist since Chicago Pneumatic Tool Co. v. Hughes Tool Co. should not be taken to denote that it is unimportant for the patentee to make it clear how many patents are really claimed to protect a product. Specifically, it remains important that the patentee should clearly mark every patent number desired to possibly exercise the rights on the notice in a normal circumstance.
* 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?
In the above, we have reasoned that there should be no precedent, which teaches and suggests that it is unnecessary for the notice to identify which specific patent is referred to protecting a specific product. Although we cannot determine our reasoning above must be correct, it appears that we should not put too much efforts here to determine that an exact answer for the above is the prerequisite for discussing the following topic.
Specifically, is it possible that a direct notice has something in nature, which is different from an actual notice? As Amsteadlndus. indicated, in an actual notice, it must allege infringement and inform the infringer which specific patent is infringed. Here, it might deserve us to discuss as follows:
1. Without the reference of a product, it is not easy to describe what might be infringing a patent? By the statutory notice, the patentee is declaring that any one who is interested to make a product similar to that on which the notice is placed should carefully study whether there is a potential infringement. Accordingly, the product itself serves as a medium to alert the possible person who is interested to make a similar or identical product. In as much as the product having been marked, a very important cue has been established, which generates a possibility that some information about the patent might not be so critical since the potential maker for identical or similar products has been given a clear message of possible infringement through the notice on the product.
2. To inform a person what he makes is infringing is also uneasy without referring to a specific patent. This will explain why a statutory marking notice is preemptively advantageous in that the patentee will have the liability to try to prove something in an actual notice as to why there is an infringement while in a marking notice, the potential identical or similar product producer will have the obligation to stay away from infringement.
3. Accordingly, we have thus known that there do be differences in nature between the marking notice and the actual notice. What we cannot readily know are that:
A. Whether such differences are sufficed to make reasonable that the practices for the marking notice and the actual notice should be different? In this regard:
a. Amsteadlndus considered for an actual notice, it must allege infringement and inform the infringer which specific patent is infringed while 35USCˇ±287(a) stipulates for giving marking notice, one should either fix thereon the required word together with the number of the patent;
b. Although we cannot know whether we can have unanimous consent that ˇ§a specific patentˇ¨ is meaning the same with ˇ§the number of the patent,ˇ¨ according to the general understanding in language, it would appear that the former leaves no much room to argue what is a specific patent whereas the latter does give room to the reasonable existence of the loosened notice statement made by Chicago Pneumatic Tool Co. v. Hughes Tool Co. that the patented item is covered by one or more of listed patents;
c. Thus, the court appears more lenient to the marking notice than the actual notice.
B. If yes, what kinds of differences in practices are justified? How far can the court be lenient for the marking notice? Can the following case be allowed by the court? A patentee owns 10 different products, where these products do not have the possibility to be grouped together in any way to form one set, respectively protected by 10 patents. For complying with the marking requirements in a simpler way, can the patentee prepare a general label containing a list of 10 patent numbers and stating any one of his 10 products is protected by one of 10 listed patents to be fixed to any of his products? We would like to leave the answer to this question to the US patent attorney.
It is thus believed that it is critical and compulsory that a specific patent must be specified in an 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
According to the law, unless there is an actual notice, one cannot claim damages if the product is not marked. Here we could have interesting comparisons and considerations in this regard where there is no patent marking as follows:
1. The infringer neither knows there is an infringement nor receives an actual notice: Under such situation, we need not discuss more;
2. The infringer does not know there is an infringement but does receive an actual notice of infringement: According to the law, the infringer is liable in this case. It is believed that one cannot find opposite reasons to negate the liability of the infringer in this case for the actions made by the infringer after he receives the actual notice from the patentee;
3. The infringer does know there is a possible or an actual infringement but does not receive an actual notice: According to 35USC287(a), it would appear that the infringer is not liable for damages. Nevertheless, there are possible alternative interpretations for this sentence, i.e.:
A. The infringer has no liability under all applicable laws: If this is the case, we must question or wonder whether such provision is justified? This is because our bottom heart might ask whether we will take it for granted that an intentional wrongdoing needs not be punished simply because the patentee does not formally issue a written document stating a fact which has been clearly known to the infringer?
B. Although the infringer has no liability under the patent law, it is liable under other applicable law, e.g. the tort law by which a person can claim damages from another person who intentionally engages in an action, which infringes otherˇ¦s rights. Such assertion might be acceptable if we really consider that the infringer is not liable for damages under the patent law;
C. If the alternative B is available, it might be unnecessary or we do not have strong motive to discuss whether we should find a way to allow the patentee to claim damages under the patent law for the action of an infringer who has actual knowledge that what he does is an infringing action. If decided not available by the court, some one might have a drive to discuss or develop in the way above suggested. Again, we would like to leave further discussions in this regard to the US attorneys.
4. The infringer knows there is an infringement and receives the actual notice: This should not deserve us to discuss here.
Accordingly, if we are compelled to answer 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, we will choose the latter.
* Will the patentee fail to comply
with the statute if he does not immediately mark its product after the issuance
of the patent?
The district court ever concluded that American Medical Systems was ˇ§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.ˇ¨ The possible time points for determining whether the marking requisite has been complied with include:
1. The time when the patent issues: This is very easy to judge whether such requisite has been complied with;
2. The time when a relatively small number has been ready to be commercially shipped: It is uneasy to define what is a relatively small number? For a product having an international market with extensive demand, a relatively small number might mean 1 million pieces; and
3. The time when the patentee is reminded of marking or decides to mark on the product a period of time after the patent issues: It appears that under such situation, the court will regard that the patentee fails to comply with the marking statute. The rationale might be that since some quantity of the products has been marketed unmarked, it is possible that lots of people will have the opportunity to gain access to the products without knowing the marking notice. This status will not be changed even the patentee has marked thereafter so that the law will assume that the patentee has failed in complying with the statute. The question we can have here is what the situation will be if the patentee can prove that the potential infringer can gain access to the patent technique or patented product only after it has marked on the product? Before we can reply this question, we must know the answers to the following questions, i.e. by the statutory marking requirements, does it mean the (patent) law desires to prevent:
A. The innocent potential infringer from a prejudicial disadvantage: If this is the case, the assumption made by the above court is wrong so that the correct interpretation to the law should be as soon as the patentee has made the marking and proved that the infringer produces the infringing product after becoming known to the existence of the patent, the patentee has fulfilled its obligations before the law; or
B. Legal rights of the patentee from being etched away through a highly recommended precautious measure duly made by the patentee: Since the statutory marking requirement is only an example of the highly recommended precautious measures, we should not logically preclude any other measure, which has or can play the same effect; or
C. The patentee from claiming damages without patent marking: In view of the above two alternatives, we cannot find further interests to put more efforts in discussion here although we might be wrong under the current interpretation of the relevant laws.
Accordingly, the court decision that 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 ˇ±287(a) will be welcome by us only when the patentee cannot prove that the infringer produces the infringing product after got known to the existence of the patent somehow.
* After knowing failure of the compliance with the law, can the patentee cure the defect by means of simply marking the patented product immediately?
As above described, it is believed that we should interpret the law in the way that as soon as the patentee who fails in the very beginning in marking the products has later marked the products, any one who infringes the patent through in sight of the later marked products or getting known to the existence of the patent after so proved by the patentee should be held liable to infringements. Specifically, what is critical:
1. Is not whether the patentee has immediately marked the product after knowing failure of the compliance with the law: This is because the patentee can neither readily determine the infringer must infringe the patent after got known to the marked product or the existence of the patent nor convince or guarantee to any body on earth a potential infringer will or does not produce the patented product simply because of taking the marketed product as non-patented through no notice on the products; but
2. Is whether the patentee has proved that the infringer infringes the patent after the infringer gets known to the marked products or the existence of the patent: The law requiring the patent marking should not be taken as the apparent patent marking is the crucial factor that the patent marking is the sole critical medium by which one can comply with the law. By so taking, it is believed that we are not trying to overrule the rules of the world or the patent law, which are always believed to be fond of having a clear and simple rule for judgments on matters on earth. Good or wonderful matters will not come easily or in a simpler way. Instead, we are trying to make it clear that the law should be interpreted in a neater way by which the human beings can lead their lives in a more justified manner.
It is believed that we have raised a lot of research topics, which might be headache to some authorities. Although we cannot know what we think and raise are correct or finally wrong, we do believe that those topics might bring forth a more wonderful or lovely world to the human being although this might come only after the world will more or less be confused or messed for a short while.
meanings behind the law are uneasy to be easily understood by the layman.
Shall we strive for the case that the law article is fully understandable
by the layman? Is this possible?
Is this necessary? Through
such reflection, it appears that problems we make are more than solutions we
2. The law
itself plays the role of majority violence sometimes.
Since the human being selects to lead or relies on a society life, it
must lead its life following the rules of a society.
This should be simple to be understood.
What we would like to enquiry is if a person decides to partly lead or
partly relies on the society, can he enjoy the rights to only partly comply with
the corresponding rules set forth in the society?
It is believe that the more civilized a society is, the more possibility
a part compliance with rules of a society will be allowed.
Even at the present situation, it is believed that if a person has been
nearly independent of a society, he or she shall have the least obligation to be
imposed or bound by rules outlined by that society.
3. Since the patented process resulting product
or the patented process operated machine do not subject to any change so that it
is unnecessary for either of them to be marked, we cannot find any tangible
article to affix the patented notice for such patented process so that it should
be correct for us to take that no marking is required for such patented process.
4. If some one asserts that a product, which is
changed somehow by a process, which, however, is not originally devised to make
any change on the product should be marked with the patented process, we would
like not to blame or discourage his or her such assertion.
5. The word ˇ§onlyˇ¨ in the sentence that
ˇ§the patent claims are directed to only a method or processˇ¨ no more must
preclude that the operating machine or the produced product has nothing to do
with a patented process in essence.
6. It appears to be unconvincing that an
independent claim of a first subject matter will naturally become a dependent
claim of a depended claim of a second subject matter simply because the smart
human being is desirous of saving some time and keeping the claim text concise.
7. The loosened notice statement made by Chicago
Pneumatic Tool Co. v. Hughes Tool Co. that the patented item is covered by one
or more of listed patents should only be applicable when a set of products are
involved in where each product is protected by a respective patent number.
8. A statutory marking notice is preemptively
advantageous in that the patentee will have the liability to try to prove
something in an actual notice as to why there is an infringement while in a
marking notice, the potential identical or similar product producer will have
the obligation to stay away from infringement.
9. If we are compelled to answer 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, we will choose the latter.
10. Although we cannot know what we think and
raise are correct or finally wrong, we do believe that those topics might bring
forth a more wonderful or lovely world to the human being although this might
come only after the world will more or less be confused or messed for a short