Shout It From the Rooftops: The Ins and Outs of Patent Marking
Why Patent Marking? A patent owner may recover monetary damages for up to six years of retroactive patent infringement. However, subject to certain exceptions described below, damages do not begin to accrue until the alleged infringer has been given notice that it is infringing a particular patent. When a patented “article” (i.e., a product) is properly marked, alleged infringers are deemed to have “constructive notice” of the patent owner’s rights and can be held liable for damages from the date the infringement begins even if they do not have “actual notice” of the patent owner’s rights. On the other hand, if the patent owner fails to mark its patented articles, monetary damages begin to accrue only after the alleged infringer has received actual notice (e.g., via a cease and desist letter) of the patent owner’s rights, which could be years after the infringement began. For this reason, in many cases, without proper patent marking, the costs of litigation can outweigh the recoverable monetary damages. However, if the asserted patent only covers methods or if the patent owner never made, sold, or offered to sell a patented article, there is no marking obligation since there was nothing to mark. Thus, to maximize the potential monetary recovery for infringement, patented articles should always include an appropriate marking to show that those articles are patent protected. Articles may be marked “patent pending” once a patent application (i.e., a provisional or non-provisional patent application) covering that article has been filed. “Patent pending” does not provide any legal protection for the invention or impact potential monetary damage awards. However, it can deter competitors from copying a design that could potentially expose them to patent infringement liability. Many inventors file provisional patent applications and mark their articles “patent pending” with no intention of filing or prosecuting a corresponding non-provisional patent application. They might employ this strategy to attract customers and investment and deter competition without the (often) significantly higher costs associated with the preparation and examination of a non-provisional patent application. How to Mark Your Articles There are two options for properly marking patented articles: traditional and virtual. In either case, it is essential that “substantially all” patented articles (i.e., at least 65%, in some cases) be marked with the patent number, consistently and continuously. 1. Traditional Patent Marking Traditional patent marking requires that a marking be applied to the article itself or applied to the packaging if the article itself cannot be marked. The marking must include either the word “Patent” or the abbreviation “Pat.” followed by the relevant patent number(s). Below is an example tag that might be placed onto a patented article: The patent owner has an obligation to mark (and not to mismark) the patented article with only the patent number(s) that cover the article and to update all patent markings when the patent status changes (or to require its manufacturers, licensees, etc. to do so). For example, the marking must be updated to replace “patent pending” with the newly-issued patent number(s) or to remove “patent pending” if the application is abandoned. Failure to correctly mark patented articles or failure to update those markings could make the patent owner liable for “false marking.” 2. Virtual Patent Marking Alternatively, patented articles may include “virtual” markings that consist of the word “Patent” or “Pat.” followed by the URL of a website that lists the relevant patent(s) for those articles. Advantages of a virtual marking are that the same marking may be applied to all articles. That marking never changes, and, therefore, the manufacturing and assembly processes never change. Additionally, updating the patent notice on the corresponding website is fast and...
Read MoreInsights for New and Emerging Businesses Leasing in the Pandemic
If you are a new or emerging business owner beginning the process of finding a suitable property to lease, it is important to be critical of the lease provided by the landlord. You should also attempt to negotiate each provision of the contract to ensure that the lease works practically and with the intended goal of your business. This blog post addresses a few of the key provisions that you as a business owner should pay close attention to and can help you determine how each provision aligns with your business goals. Especially while facing the impacts of the COVID-19 pandemic, it is imperative that business owners have an operative knowledge of their lease and know that it is likely negotiable. Key Commercial Lease Provisions Key areas and provisions to focus on when reviewing your business lease include: Lease Term: One of the most important aspects of your new lease is the structure of the lease term. Landlords typically prefer a longer term commitment from tenants, while most growing businesses prefer shorter, more flexible terms. If a growing business is unsure of how long they could remain at a particular property, they can negotiate stronger renewal rights into their shorter lease term. This will ensure that the business will be able to remain in the space if they choose to renew the lease. The drawback to this approach is that landlords may give less reimbursement for tenement improvements to the space, as the tenant will be in the space for a shorter expected period of time.Another approach is to agree to a longer term but negotiate early termination periods. Early termination periods allow tenants to purchase their way out of a lease at given periods within the lease. Pursuing this strategy will often allow tenants to negotiate portions of their tenement improvement costs as part of their termination. Keep in mind that this route includes the excess cost of having to “buy out” of the lease.Assignment Provision: In almost every commercial lease, there is an assignment provision that requires the landlord’s consent in order to sublease or assign the property. It is important to know what your company’s plans are moving forward and attempt to narrow the scope of the assignment provision accordingly. An important item to check is whether the definition of assignment in the lease includes an instance when you sell your company. If this is the case, it is important to build time into the sale process to account for getting the landlord’s approval. It is also important that buyers of your company who are assigned the lease have the option to extend. Depending on the needs of your business, it could be important to negotiate items such as no landlord consent required to assign to an affiliate, no landlord consent required to assign to a surviving entity of equal or greater net worth, or no landlord consent required to assign to a tenant that agrees to the use for the space as permitted in the lease. These are all items that can be negotiated into an assignment provision. A final item to be aware of is a “recapture” provision. Ensure that your lease does not allow your landlord to “recapture” your space if you request an assignment. These provisions can allow landlords to terminate the lease.Build Out Terms: It is important to recognize who has the obligation to build out the space. If the obligation is on the tenant, is there an allowance from the landlord to compensate for improvements made to the space? If so, the business should take care to document the costs...
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