Divided Over Damages: Courts Split On Whether Failure to Mark Precludes All, or Only Some, Pre-Suit Damages

Under the patent marking statute, 35 U.S.C. §287, and Federal Circuit authority, patentees cannot recover pre-suit damages unless and until they (or their licensees) mark their patent-practicing products or provide actual notice of infringement, where such pre-suit damages accrue from as early as six years before suit is filed. But the statute does not address, and the Federal Circuit has not decided, the extent to which pre-suit damages are unavailable in situations where the marking obligation started only recently, during the six year pre-suit damages period, such as just a few months before suit is filed. In these situations, it is unclear whether the patentee is precluded from recovering: 1) all pre-suit damages (for up to six years); or 2) only pre-suit damages accruing after the marking obligation started (which could be just a few months). The answer can have dramatic implications on a patentee’s potential damages and, conversely, a defendant’s exposure.