How Marking Mishaps Mess up Patent Litigation Strategies How Marking Mishaps Mess up Patent Litigation Strategies

Patent owners are required to mark their patents with the word 'patent' or 'pat' along with a corresponding patent number or website listing the patent. If patent owners fail to properly mark their patent, they can face repercussions during a patent litigation procedure. Managing Intellectual Property interviewed Finnegan partner David Mroz to discuss implications for failing to properly mark patents.

Dave explained that companies can have a patent marking procedure in place but then license the patent to other companies that may not follow through on the proper procedure and mark products as required. He stated, "This could cause the compliance rate to drop below the substantial compliance threshold and preclude a party from satisfying the marking statute, even though a marking policy was in place."

If a plaintiff fails to comply with marking requirements, they may try to drop apparatus claims, which cover what an invention is, and only assert method claims, covering what an invention does, in order to obtain pre-suit damages. Some courts are more lenient when allowing plaintiffs to drop claims.

Dave explained that the varying consensus on dropping apparatus claims during suit can lead to forum shopping within the confines of TC Heartland. He advised attorneys to look at the court's history of how they resolved similar disputes in the past when deciding forum. Dave added that it would be helpful for the Federal Circuit to rule on the issue.

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