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Patent marking in the U.S. and India – A comparison

By Tarun Gopalakrishnan & Adarsh Ramanujan


The purpose of patents is to protect and incentivise innovation. The structure of the patent system sets up a trade-off between disclosing the innovation and a limited exclusivity over it. Today, the number of patents held by an individual has become a proxy for an individual’s contribution to the sciences; corporations wear patent numbers as a badge of pride. As much as one may consider patents as an entity’s (or individual’s, for that matter) commitment to innovation and / or of technological superiority, at a fundamental level, patents also serve an important “public notice” function – communicate the prohibited area of operation for other competitors.

Innovation, and consequently the patent system, has grown in sheer numbers and specialized in scope to the point where it is no longer possible to publicise each patent by mere publication. Patent marking, therefore, may have assumed a much more crucial role in serving this “public notice” function to consumers and / or competitors. By marking their products, patentees provide a basis for the public to ascertain the status of the intellectual property embodied in an article in general circulation.  Patent marking serves to clearly delineate those inventions that are off-limits to the public and thereby prevents innocent infringement.

The American marking statute
The American patent marking and notice provision is contained in 35 U.S.C. 287. Notice of infringement can be established in three ways - by marking the articles, actual notice sent to the infringer, or by filing a suit against infringement. The purpose achieved by marking the article is awareness among the general public and to protect innocent infringers. Marking a patent appropriately is considered to be notice in rem i.e. to the public at large, and removes the need for any other form of notice of infringement. A valid mark under the statute is one which contains the words “patent” or the abbreviation “pat.”, followed by the patent number. This patent marking requirement, however, is limited to the question of damages; it is not available as a defence to infringement itself. 

Originally, the U.S. statute mandated a “duty to mark”. The 1842 and subsequent statutes penalized default through taking away the right to recover damages. This was amended to the present, more permissive, “may mark” requirement in 1994. This allows the patentee the choice of weighing the costs and benefits of marking. The present form of the statute does not require a patentee to have marked their products right from the time of issuance of patent for entitlement to damages. As was held by the Federal Circuit in American Medical Systems v. Medical Engineering Corp., the US Congress structured the statute so as to tie failure to mark with the disability to collect damages, as opposed to failure to mark at the time of issuance with the disability to collect damages. Thus, the marking requirement has evolved into a threshold time-period from which one may recover damages in a patent infringement suit. As the Court observed in American Medical Systems, this is simply a free-market based implementation of the same principle - “[t]he sooner one complies with the marking requirements, the more likely one is to maximize the period of time for recoverable damages.”

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[Tarun Gopalakrishnan is an Intern and Adarsh Ramanujan is an Associate in IPR Division, Lakshmikumaran & Sridharan, India]
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