22 AIPLA Q. J. 85 (1994)
United States Patent Marking and Notice Statute, The; Moore, Preston; Nakamura, Jackie

handle is hein.journals/aiplaqj22 and id is 93 raw text is: THE UNITED STATES
PATENT MARKING AND NOTICE STATUTE
Preston Moore*
Jackie Nakamura**
INTRODUCTION         ....................................................................................   87
1.       THE MARKING PROVISION .................................................... 88
A. The Applicability of 35 USC § 287(a) .................................. 88
B.   The Mechanics of Marking .................................................... 89
C. False Marking Under 35 US C § 292, or Patent Misuse ........ 90
D. Damages Are Recoverable from the Time the
Patent Owner Either Fully Complies with the
Marking Provision or Provides Notice of
Infringemen4 Whichever Occurs First ................................... 90
E. The Patent Holder's Duty to Make Reasonable
Efforts to Ensure Marking by Licensees and
Other Authorized Patent Users ................................................ 91
E   Actual Knowledge of Anothers Patent Does
Not Substitute for Marking or Notice ................................... 93
G. Section 287(a) Is Not an Affirmative Defense to
Patent Infringemen4 and the Burden of Proving
and Pleading Compliance Is on the Patent Holder ................ 93
H. The Failure to Mark Does Not Affect Determination
of a Reasonable Royalty ........................................................ 94
I.   Marking Issues Can Force a Patentee to
Take Inconsistent Positions .................................................... 94
II.      NOTICE OF INFRINGEMENT .................................................. 95
A .  Form    of  Notice ......................................................................  95
B. An Infringer's Actual Knowledge Is Irrelevant;
Section 287(a) Requires a Patentee to Undertake
an Affirmative Act of Notice ................................................. 96
C. The Recipient Must Have Authority to Receive Notification ....... 97
III.     PRACTICAL APPLICATIONS .................................................... 97
A. Factors for a Patent Owner to Consider in Deciding
Whether It Would Be Worthwhile to Mark a New Product ......... 97
B. The Marking Estoppel Doctrine ............................................. 98
* Preston Moore is a 1974 graduate of the University of Chicago Law School and is a partner in the San
Francisco office of Morrison & Foerster. He presently heads the firm's International Litigation and
Dispute Resolution Group. Mr. Moore's practice has emphasized intellectual property litigation, dis-
pute resolution, and licensing, as well as all aspects of the law of competition and monopoly. He has
also had extensive experience in alternative dispute resolution and international arbitrations.
** Jackie Nakamura is a litigation associate in Morrison & Foerster's Palo Alto office. She is a 1990 grad-
uate of Boalt Hall School of Law, U.C. Berkeley, and has an undergraduate degree in biological sci-
ences from Stanford University. Ms. Nakamura, a patent attorney, practices in the general area of intel-
lectual property law, including patent and trade secret litigation, biotech patent prosecution and
interferences.
The views expressed in this Article are those of the authors alone and may not be attributed to Morri-
son & Foerster or any of its clients. © 1994 Preston Moore and Jackie Nakamura.
85

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