Patent Marking: Recent Federal Circuit Guidance, Complying With False Marking Statute

The Federal Circuit recently addressed patent marking in its decision in Arctic Cat Inc. v. Bombardier Rec. Prods. (Fed. Cir. 2020). The court addressed whether the cessation of sales of unmarked products excuses noncompliance with the notice requirement of Section 287 such that a patentee may recover damages for the period after sales of unmarked products ceased but before the filing of a suit for infringement. The court held that it does not.

Deciding whether or not to mark articles as patented and complying with the False Marking Statute are not cut and dried. False patent marking can occur under a variety of circumstances, and anyone claiming a competitive injury from an alleged false marking may sue for the alleged mismarking of an unpatented item.

Companies and counsel must carefully weigh the costs and benefits of enforcing patents in deciding whether to mark the patented item.

Listen as our authoritative panel of patent attorneys examines patent marking requirements and discusses recent court treatment and what it means for patent owners, licensees, etc. The panel will also review whether, when, and how to do patent marking. The panel will address the issue of false marking and offer best practices for marking patented items, pre-assertion diligence and considerations, and for minimizing liability risks.

1. Patent marking requirements
2. Court treatment
3. Patent marking
   1. Determining whether to mark: considerations
   2. When to mark
   3. How to mark
4. Strategic enforcement considerations in view of a failure to mark
5. Minimizing risk of liability for false marking

The panel will review these and other key questions:

• What factors must be considered when determining whether to mark a patented item?
• How are the federal courts treating claims that allege false marking?
• What steps can companies and their counsel take to minimize and mitigate the risks associated with false marking?