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Pitfalls in Licensing Patents

by | Feb 27, 2020 | Patent Law

Patents provide essential protections for doing business. There are a wealth of ways you can defend your patents, but seemingly just as many where you may put them in jeopardy. A recent ruling made clear one more way your defenses may be at risk.

The U.S. Court of Appeals for the 11th Circuit ruled that Arctic Cat Inc. can’t seek back-damages from Bombardier Recreational Products Inc. for infringing on a patent. A steering system used in personal watercraft is at the heart of the violation, but a licensing deal made things a little more complicated.

Missing fine print

Arctic Cat sought damages under their patent since they weren’t actively producing the steering systems, a status that could remove the requirement for marking protected property. But the courts ruled that a deal they made years before would reduce the amount of damages they could collect. They had licensed the right to manufacture to another company without specifically requiring them to mark models with the patent number.

Marking standards

Once the licensed company turned-out steering systems without the proper stamp, Bombardier was not on the hook for pre-lawsuit infringement damages. Manufacturers – or their licensees – generally need to meet one of the marking standards as things start coming off the assembly line:

  • Put the word “patent” or the abbreviation “pat.” along with the corresponding patent number on the product
  • Place the information on the packaging that contains at least one of the items
  • Affix a web address on either the product or the package that leads to the list of relevant patents

Unmarked products usually fail the notification test, and any infringers will only be liable for damages after you deliver notice of infringement.

If you decide not to manufacture your product and instead license your patent to others, licensing is rarely as simple as handing the reins over. It is usually best to consult with a patent attorney, whether it’s to license your invention or to pursue one or more of the other benefits of patents.