Americans spend over $10 billion a year to access legal documents. Sounds ridiculous, but it’s true! Lawyers and other citizens are often forced to pay private entities (e.g. LexisNexis, WestLaw) for access to the law and legal precedent. States, counties and cities often copyright the law that they pass.
Carl Malamud has been active in getting the federal government to formally declare that all American law, including all judicial opinions and state laws, are not subject to copyright. Over the last few years, he has successfully worked to put federal judicial opinions and other legal documents into our hands for free. He started Public.Resource.org, which is an organization that is pushing to put the law into the public domain. You can see a lengthy talk he gave in October 2009 in Oregon titled Three Revolutions in American Law through YouTube.
David Weinberger and Carl Malamud sat down in February 2010 to talk about the chances for freeing the written word of the law. The short article including the audio can be found at the Media Berkman site.
Victoria Espinel was recently appointed as U.S. Intellectual Property Enforcement Coordinator. On February 23, 2010, she posted a blog entry on the WhiteHouse.gov website. Sadly, she perpetuates some lies about “intellectual property.” I only address the most egregious lies here, principally the lack of distinction between “ideas” and “intellectual property.” Victoria fails to recognize the distinction — and there is a fundamental, substantive distinction.
She paraphrases or quotes the President as saying that “it is important that our ideas are protected.” However, copyright law merely protects “original works of authorship fixed in any tangible medium of expression” pursuant to the copyright statute, 17 U.S.C. § 102. That section, in circular 92, goes onto state that “Works of authorship include . . . categories” including: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures; sound recordings; and architectural works. No protection for ideas there. In fact, there is a long line of cases and legal doctrine freeing ideas for public consumption. The focus of copyright is expression, not ideas.
Patent law likewise does not protect ideas. Patent law merely protects “any new and useful process, machine, manufacture, or composition of matter” as stated in 35 U.S.C. § 101. Notice the similar lack of the word “idea” in this statute. Neither “ideas” nor “discoveries” are protected: merely “inventions” that satisfy all of the requirements of the patent office.
Victoria further states in her blog post that, “Intellectual property are [sic] the ideas behind inventions, the artistry that goes into books and music, and the logos of companies whose brands we have come to trust.” This statement brings up an entire can of worms. Principally, my trouble is with the use of the word “property” as if somehow “intangible assets” are the same as real property. They are not. I am going to save a discussion of the true origin and meaning of intellectual “property” for another time. In short, I firmly disagree that “ideas” are equivalent to “property” or “intellectual property.” As shown above, “ideas” are not “intellectual property.” The words “artistry” and “logos” in their abstract are not defensibly part of intellectual property.
She also states that “My job is to help protect the ideas and creativity of the American public.” Funny, the laws don’t back her up on this point. However, she appropriately backtracks and states that the U.S. can remain a global leader by “appropriately protecting our intellectual property.” I can agree with that statement! The rest of her comments are more correct and defensible. Feedback is welcome.
The opposite of proper marking of patents is not necessarily false marking. False marking involves deception of the public. False marking occurs when a product for sale is marked “patented” when it is no longer covered by patent protection. In particular, 35 U.S.C. 292(a) states in relevant part that “Whoever marks . . . or uses in advertising in connection with any unpatented article the word ‘patent’ . . . for the purpose of deceiving the public . . . or ‘patent pending’ . . . Shall be fined not more than $500 for every such offense,” (emphasis added).
In practice, false marking leads to someone bringing a law suit against the false marker. Either the government or a private individual can initiate the suit. 35 U.S.C. 292(b) states that “Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States,” (emphasis added). Thus, in principle, anyone, even someone who is not harmed by the false marking, can bring a law suit for damages against a patentee who sells an article that is falsely marked.
The Forest Group, Inc. v. Bon Tool, Co., 590 F.3d 1295; 93 U.S.P.Q.2D (BNA) 1097 (Fed. Cir. 2009) is a recent case involving false marking of construction stilts. This case has changed the long-standing damage principle to a “per item” basis instead of a “per marking” basis. The Forest Group court states that “the statute’s plain language requires the penalty to be imposed on a per article basis.” Id. at *10. Forest Group overturns a 100-year precedent set in London v. Everett H. Dunbar Corp., 179 F. 506 (1st Cir. 1910). For more information on this topic, see a recently published and informative article on false marking (pdf format) by Justin E. Gray and Hal Wegner.
Often a business takes a product to market at about the same time that patent applications are filed with the U.S. Patent Office. Sadly, if a patent ever issues, several years have passed. Products often evolve over time. My question that I submit for feedback is this: What should a business do as to marking a product that does not completely reflect all of the features of the claims of the patent that ultimately issues from the U.S. patent office? How should patent attorneys counsel clients?
My general answer is this. The patentee should mark products that the patentee reasonably considers covered by the description found in the patent.
The relevant law to consider is found in 35 U.S.C. 287, which is titled “Limitation on damages and other remedies; marking and notice,” (emphasis added). Section (a) states in relevant part that “Patentees . . . making, offering for sale, or selling within the United States . . . or importing any patented article into the United States, may give notice to the public that the same is patented,” (emphasis added). According to this section, this may be done “either by fixing thereon the word ‘patent’ . . . together with the number of the patent, or” . . . affixing the same to the packaging. Thus, there appears to be no explicit requirement to acquire some kind of legal determination (e.g. opinion of counsel, judicial ruling) that a claim of an issued patent actually covers a properly marked product of the patentee.
The purpose of marking is to “give notice to the public” that a patent could be involved with a product. A potential infringer should then seek out a patent attorney to look closer into the matter. If a little over-notice is given, it is not a big deal. The consequence of “over marking” to the patentee seems simple: no infringement will be found and no damages will be awarded to the patentee.