- Posted on: Apr 4 2022
By: Luke Hibbeler [4/4/22]
To collect damages in a lawsuit, patented articles must be marked with the word “patent” or “pat” with the patent number per 35 U.S. Code § 287.
What about articles that are patent pending? Is there a requirement to mark those as well? In short, there is no requirement to mark articles as patent pending, but it could still be beneficial to do so.
The purpose of §287 is to give constructive notice of the patent to the public. The idea is that when someone sees a patent mark, they will know the invention is patented. Historically, a patent pending mark has not had the same effect.
Courts have held that a patent pending mark does not give constructive notice, and Section 287 is not satisfied by marking an article with the words “patent pending.”  One court even went so far as to state that a patent pending mark gives no notice whatsoever.  The court elaborated by stating that “patent pending” is not even a guarantee that a nonprovisional application has been filed and that even a filed application does not guarantee a patent.  Moreover, the scope of the claims in patents that do issue is something totally unforeseeable. 
While courts have historically held that patent pending does not give constructive notice of a patent, a more recent court has indicated they feel differently.  In a footnote, the court noted the above-cited cases all took place before a rule change in 1999, which provides for the publication of patent applications. The court stated that the public is no longer in the dark on patent prosecution activity because real-time prosecution activity is published. 
So, while it may be unclear how a court will treat a patent pending mark and if that footnote is enough to take a stand against earlier precedent, the mark can still provide other benefits.
Marking an invention as patent pending lets competitors know that the first steps of the patenting process have begun and that there could be hefty consequences if they knock off the product. This is often enough to deter others from copying the invention. Additionally, a patent pending mark may give financial investors and customers a feeling that the invention is worthwhile and innovative if, after all, it is worthy of the patenting process.
Therefore, to be on the safe side, it may be better to mark the invention as patent pending.
*Note, it is a crime to mark an invention as patent pending before the invention is filed with the patent office.
 MacPike v. Am. Honda Motor Co., No. 92-30094/LAC, 1993 U.S. Dist. LEXIS 18970, at *16 (N.D. Fla. Sep. 30, 1993).
 State Indus. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985).
 WCM Indus., Inc. v. IPS Corp., 721 F. App’x 959, 974 (Fed. Cir. 2018).