HOUSTON, April 12, 2007 -- In an article in the April 2007 issue of Patent Strategy & Management titled “The Patent Marking Statute: Investigate Before You License,” Firm lawyers Paul Ragusa and Peter Withstandley offer patent owners suggestions of what they need to do to avoid “the potentially harsh forfeiture of significant damages.”
Ragusa and Withstandley explain that it is the patent owner’s duty to investigate any licensees.
“Compliance with the marking statute extends to all licensees making the offering for sale, or selling patented articles,” Ragusa and Withstandley state. “Further, the patentee bears the burden of proving its licensees’ compliance with the marking statute by a preponderance of the evidence. Therefore, a patent owner must take steps to ensure that its licensees are complying with the marking statute.”
However, they state in the article, “courts have recognized that patent owners are not in the same position as their licensees concerning licensee business activities and often can not know everything a licensee did or did not do with respect to patent marking. Thus, when the failure to mark is caused by a licensee, courts may consider ‘whether the patentee made reasonable efforts to ensure compliance with the marking requirements.’”
To read Ragusa’s and Withstandley’s complete article, please click here.
To learn more about Baker Botts’ Intellectual Property Department, please click here.
For more information, please contact:
Michael A. Cinelli
Public Relations Manager