patent invention

We’ve all seen patent markings on products.  Something like “pat. US 6,568,969” printed, stamped or molded into the product.  Where the product itself can’t be marked, the patent marking can be printed on packaging or a label. 

Here’s what the statute says, at 35 USC §287(a):

Patentees… may give notice to the public that the [product] is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent…But why bother with patent marking?

In short, the patent marking determines the damages, if any, that the patent owner can collect:

..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. …

In short, if a product is made or sold without a patent marking, then the patent owner can only collect damages for infringement occurring after the patent owner notifies the infringer of the infringement.  The patent owner must take affirmative steps to provide notice, such as sending a demand letter to the infringer, filing a lawsuit for infringement, or including patent markings on its products. 

Actual knowledge of the patent and intentional infringement by the infringer are not enough.

Which brings us to the case of Artic Cat v Bombardier Recreational Products, decided in February, 2020.  Artic Cat obtained patents to a steering system for a personal watercraft. Artic Cat licensed the patents to Honda and Honda produced watercraft with the patented steering system.  The license did not require Honda to include patent markings on the steering system and Honda did not mark the steering system.  Bombardier copied the steering system and Artic Cat sued for patent infringement.
The question before the court was whether Artic Cat could collect infringement damages for the period of time prior to filing the infringement lawsuit.  The Federal Circuit Court of Appeals concluded that because Honda produced the patented steering system and did not include a patent marking, Artic Cat could collect damages only after it gave actual notice to Bombardier by filing suit.

The lower court concluded that Bombardier knew of the patents and decided to infringe anyway.  Bombardier had actual knowledge that its actions infringed, even though Bombardier did not have ‘notice’ from Arctic Cat until the lawsuit was filed. Actual knowledge was not good enough for the three-judge panel of the Federal Circuit. 

Hopefully, Arctic Cat will ask for review of the decision ‘en banc;’ that is, by the full twelve judges of the Federal Circuit. The Federal Circuit sitting en banc has the power to overrule the prior decisions relied upon by the three-judge panel in this case.  To this observer, actual knowledge of a patent and intentional infringement, found by a jury, should satisfy the notice requirement.

The bottom line:

All of this would have been avoided if the Honda license required Honda to mark the patented system.  Mark your patented inventions, avoid litigation and collect more in damages.

–Robert Yarbrough, Esq.