Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
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.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
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.
Compliance Officers: Recent Regulatory Guidance and Enforcement Actions and Mitigating the Risk of Personal Liability
This article explores legal developments over the past year that may impact compliance officer personal liability.