Dear gina,
Interesting question. I did a presentation on this recently for a licensing group. Notification and damages are important licensing issues in the US. It's a little bit tricky actually – especially for the accused infringer!
According to 35 U.S.C. §287(a), damages may not be collected until the accused infringer is notified of a patent. A licensor may preserve her rights to monetary damages, by:
1) physically marking a product sold, manufactured, or imported into the territory of the patent with the patent number;
2) notifying a potential licensee of the existence of the patent by direct communication, such as by letter; or
3) filing a lawsuit.
The latter two are known as “actual notice.” The issue of notice has significant implications in the early stages of a licensing program.
If you have appropriately marked your products with the patent number in question, the notice is assumed to have been given in the US.
If you have not marked your products, the American courts have developed a three part test in order to determine if notification according to 35 U.S.C. §287(a) has been satisfied:
1.) The U.S. patent alleged to be infringed must be identified;
2.) The accused infringer’s product must be specifically identified; and
3.) A charge of infringement must be made.
The tricky part is 3). How do you put an infringer on notice so that you may start the damages clock, while not creating an "actual controversy" which would give the infringer the opportunity to pre-emptively file for a declaratory judgement?
Title 28 of the United States Code, Section 2201(a) states:
“In a case of actual controversy within its jurisdiction …. any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought. Any such declaration shall have the force and effect of a final judgment or decree and shall be reviewable as such.”
In short, this means that certain conditions must be met before an accused infringer may file a preemptory lawsuit against a licensor asking a court to declare the patent in question invalid, or not infringed.
The challenge for the licensor is to serve notice of infringement without creating an actual controversy which would allow the accused infringer to seek declaratory relief.
Thus, the licensor will usually be intentionally vague as to her intentions. (i.e., not stating outright that there is an infringement.)
The challenge for the accused infringer is to avoid, through his own actions, perfecting notice when the licensor’s communication is by itself insufficient to do so.
The accused infringer is thus presented with a dilemma. He cannot act as though a notice of infringement has been received – while at the same time awareness of the patent requires him to take affirmative action to prevent any infringement from being seen as willful and exposing him to treble damages.
It is not black and white. As the National Law Journal indicated, “Numerous district courts have held that even a letter which is insufficiently detailed to satisfy the usual notice standard may be deemed adequate if the recipient’s response indicates that the letter was understood as a charge of infringement.”
So to answer your question, if you have identified the infringing products, identified the patent(s) and made a specific accusation of infringement, then you have probably satisfied the requirements for actual notice. (Claim charts are not necessary if you have done these three things.)
It is very important to understand the implications of all of this BEFORE you start writing letters. By your own actions, you can strength, or weaken, your position in negotiation which may help you to avoid litigation, or to bring it to a quick conclusion.
Kind Regards,
Eric Stasik
Author
Topic: actual notice (Read 2441 times)
