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The Patent Marking Statute
Since 1842, U.S. law has required patent owners to provide notice of their patent rights to the public by marking patented articles. The current statute, codified at 35 U.S.C. '287(a), permits patent owners to give notice to the public by marking a patented article (or its packaging when appropriate) with the word 'patent' or abbreviation 'pat' and the applicable patent number. The statute also provides that a failure to mark bars a patentee from obtaining damages for the period before it provided a defendant in a patent infringement action with actual notice of its infringement allegations. See Maxwell v. Baker, 86 F.3d 1098 (Fed. Cir. 1996). This can have a significant financial impact, as up to six years of potential damages may be lost.
Where a patent owner chooses to license its patents, the obligation to mark patented articles extends to its licensees. Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). Unfortunately, the patent owner rarely has access to the same information as its licensee concerning the licensee's business practices. Moreover, the patent owner's choice in determining what 'Licensed Products' can be made by its licensee, or even which claims should be licensed, may not be the final word in determining whether and to what extent the licensee should mark its products. What can a patent owner do to avoid the potentially harsh forfeiture of significant damages? Several suggestions are provided below.
Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office
A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
Bit Parts
Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights
Risks of “Baseball Arbitration” in Resolving Real Estate Disputes
“Baseball arbitration” refers to the process used in Major League Baseball in which if an eligible player's representative and the club ownership cannot reach a compensation agreement through negotiation, each party enters a final submission and during a formal hearing each side — player and management — presents its case and then the designated panel of arbitrators chooses one of the salary bids with no other result being allowed. This method has become increasingly popular even beyond the sport of baseball.
Disconnect Between In-House and Outside Counsel
'Disconnect Between In-House and Outside Counsel is a continuation of the discussion of client expectations and the disconnect that often occurs. And although the outside attorneys should be pursuing how inside-counsel actually think, inside counsel should make an effort to impart this information without waiting to be asked.