Enforcing a Software Patent: Facing the Challenge of Notice Requirements
In many jurisdictions, notably in the United States, a patent application or an issued patent may not provide effective protection against an infringing competitor unless proper notice of the patent or patent application at issue has been provided to the infringing competitor. In such jurisdictions, failure to provide such notification can bar recovery of damages for infringement.
The notice requirement can often be met by marking patented articles. However, where a patent claims a method or process, which, practically, cannot be marked, it is not always clear how to comply with the notification requirement, and whether notification is even required. This issue is of particular concern to software patent owners. While a few U.S. cases provide some guidance, software patent owners should take steps to ensure that the ability to recover damages for patent infringement is not inadvertently lost due to the absence of proper notice.
U.S. Notification Requirements for Patents
In the United States, damages for patent infringement may not be available if proper notice that an article or apparatus is patented has not been provided. This notice requirement is based on the public policy consideration that a person who infringes a patent should not be penalized for infringing activities unless that person had either actual notice from the patentee of the patent’s existence, or constructive notice, through marking in accordance with statutory provisions. Failure to give notice may result in a loss of the right to compensation for any infringing activities undertaken by a competitor before the infringer was notified1.
The notice requirement may be fulfilled through provision of actual notice, to the infringer, of the patent and of the infringing activities by the patentee. U.S. courts have found that notice from a third party does not constitute actual notice2.
According to U.S. statutory marking provisions, notice may be effected by marking a patented article or apparatus with the word “patent” or abbreviation “pat.” along with the patent number. Alternatively, where the nature of the patented article or apparatus makes direct marking impossible, a label can be fixed to the article or to the packaging of the article. The clear advantage of complying with marking requirements is that a patentee may be protected from any competitor’s infringing activities of which he or she is unaware.
However, practically speaking, if patent claims only cover a method or process, such as a software or business method, marking is practically impossible. There have been instances where U.S. courts have waived the notice requirement for patents that claim only methods or processes stating there is no duty on the part of the patentee in such a situation to notify infringers3.
This approach was extended to a case where the patentee owned two separate but related patents, one of which contained claims to a method and one of which contained claims to an article or apparatus. The patentee recovered damages for infringement of the method claims patent without any duty to notify infringers4, even though the apparatus of the related patent was not marked.
Conversely, in other cases, U.S. courts have not provided the same notification exemption where the claims of a single patent have covered both a method or process and an article or apparatus, and where there was a failure to mark the article or apparatus. In these cases, damages for infringement of any of the claims, including method claims, were not awarded for any infringing activities that occurred before the patentee provided the defendant with actual notice5.
A patentee claiming both an article or apparatus and a method or process in one patent should take care to avoid this possible limitation on recovery of damages. Furthermore, since the law regarding notification and method and process claims is, in general, complex and evolving, a prudent software patent owner will remain aware of competitors’ activities to prepare for provision of actual notice if any infringement occurs.
U.S. Provisional Rights and Notification Requirements
A patent applicant does not have any right to sue a competitor for infringement of the claims of a patent application until the corresponding patent issues. However, once the application is published, the applicant’s invention is in the public domain, and may easily be copied by a competitor.
In the U.S., provisional rights become available once a patent has issued, and allow a patent owner six years to recover a reasonable royalty from a person who, during the time between publication of the application and issuance of the patent, participated in activities that would have infringed the patent if it had issued on the date of publication6.
Provisional rights to reasonable royalties may be available if two requirements are met. First, the invention claimed in the issued patent must be substantially identical to the invention claimed in the published application7. Second, the person engaged in the harmful activities must have actual notice of the published application8.
While the meaning of “actual notice” in the context of provisional rights has not yet been judicially considered, legislative history suggests actual notice must be provided by the applicant, and must identify the application as well as identify the activities that fall within the scope of the claims9. There is no provision stating that marking may be a substitute for actual notice in this context, suggesting that the notification requirements may be the same, regardless of whether a patent claims an article or apparatus, or claims a method or process.
In order to prevent the loss to entitlement of any reasonable royalties that might be available under provisional rights, an applicant should remain aware of competitors’ activities, and be prepared to provide actual notice of the application and of any potentially infringing activities.
Other Jurisdictions
In contrast to the United States, Canadian patent law has no notification or marking requirements for either published applications or for issued patents10. In addition, once a Canadian patent has issued, the ability of the patentee to obtain reasonable compensation for any activities occurring during the time period between the publication of the application and issuance of the patent that would constitute infringement if the patent had issued11 at the date of publication is not restricted by a notice requirement.
Other jurisdictions, including the United Kingdom, Australia, India and South Africa, like the United States, restrict damages for infringement of an issued patent in specific cases where patented articles have not been marked prior to occurrence of the infringing activities. In addition, while many jurisdictions provide provisional protection against activities occurring between the publication of an application and the issuance of a patent, including the United Kingdom and Europe12, in many individual European countries, the application must also be translated into the national language and supplied to either the national patent office, or to the infringing party, in order for provisional rights to be available.
In order to ensure maximum protection when filing a patent application in an unfamiliar jurisdiction, a patent owner should take precautions to ensure that any jurisdictional marking and notification requirements have been met.
Prepared by Stephanie Reid and Isis E. Caulder
1 35 U.S.C. s. 287(a)
2 American Medical Systems, Inc. v. Medical Engineering Corp. (1993) 6 F.3d 1523.
3 Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578 at 1581 (Fed. Cir 1983).
4 State Contracting & Engineering Corp. v. Condotte America, Inc. 346 F.3d 1057 (Fed Cir. 2003).
5 American Medical Systems, Inc. v. Medical Engineering Corp. (1993) 6 F.3d 1523.
6 35 U.S.C. s.154(d)
7 35 U.S.C. s.154(d)(2)
8 35 U.S.C. s.154(d)(1)(B)
9 Congressional Record – Senate, S14719, November 17,1999.
10 Patent Act, s.55(1)
11 Patent Act, s.55(2)
12 European Patents Handbook R.56: February 2005 paragraph 30.8.1.
We are pleased to welcome the newest member of our Software/High Technology Practice Group
Sandra Beauchesne B.Sc. (Elec. Eng.)
Sandra holds a B.Sc. in electrical engineering from École Polytechnique de Montréal. In addition to being a registered patent agent in both Canada and the United States, Sandra is a member of the Ordre des Ingénieurs du Québec (OIQ). Sandra works out of the firm’s Montréal office and her practice focuses on patents in the telecommunications, wireless technology and software fields.
We are pleased to congratulate our newest Canadian Patent Agent Sylvan S. Browne B.Eng. (Elec.)(Hons.)
Sylvan holds a bachelors degree in electrical engineering with honours from the University of Melbourne (Australia) and qualified as a registered patent attorney in both Australia and New Zealand in 2001. He has been assisting in the drafting and prosecuting of patents at Bereskin & Parr for the past three years. In 2006, Sylvan passed the Canadian Patent Agent Exams and became a registered Canadian patent agent. His practice focuses on patents in the mechanical, electrical and computer-related fields. .
Speaking of IP...
The Society of Automotive Engineers (SAE) World Congress takes place April 16 - 19 in Detroit, Michigan.
The Institute of Electrical & Electronics Engineers Canada (IEEE) Conference on Electrical and Computer Engineering takes place April 22 - 26 in Vancouver, British Columbia.
The American Intellectual Property Law Association (AIPLA) Spring Meeting takes place May 9 - 11 in Boston, Massachusetts.
The Canadian IT Law Association (IT.CAN) Sixth Annual IT Law Spring Training Conference takes place May 14 - 15 in Toronto, Ontario.
For information on additional IP conferences, please visit the Events Calendar at www.bereskinparr.com
