Patent Marking: Federal Circuit Expands Liability Threat

Complying With the False Marking Statute to Avoid Claims

Recording of a 90-minute CLE webinar/teleconference with Q&A


Conducted on Thursday, March 18, 2010
Recorded event now available


This CLE webinar will provide guidance to patent attorneys on deciding when and whether to mark items as patented since the Federal Circuit's Forest Group decision expanded liability for mismarking patents. The panel will offer best practices for marking patented items and for minimizing liability risks.

Description

In its recent decision in Forest Group v. Bon Tool, the Federal Circuit Court of Appeals expanded patentee liability for mismarking patents. The Federal Circuit adopted a per article interpretation of "offense" creating the potential for significant damages.

Deciding whether or not to mark articles as patented and complying with the False Marking Statute are not cut and dried. False patent marking can occur under a variety of circumstances, and anyone may sue for the alleged mismarking of an unpatented item.

Since the Forest Group ruling, Bayer, Graco, BIC and others have been sued, and more suits are expected as plaintiffs seek to take advantage of the ruling. Companies and counsel must carefully weigh the costs and benefits of enforcing patents in deciding whether to mark the patented item.

Listen as our authoritative panel of patent attorneys examines the requirements for patent marking and recent court treatment of marking. The panel will discuss the analysis of whether to mark, how to mark, and how to minimize the risk of liability for false marking.

Outline

  1. Patent marking requirements
  2. Court treatment
    1. Forest Group v. Bon Tool (Fed. Cir. 2009)
    2. Matthew A. Pequignot v. Solo Cup Co. (E.D. Va. 2009)
  3. Patent marking
    1. Determining whether to mark — considerations
    2. How to mark
  4. Minimizing risk of liability for false marking

Benefits

The panel will review these and other key questions:

  • What factors must be considered when determining whether to mark a patented item?
  • How are the federal courts treating claims that allege false marking?
  • What steps can companies and their counsel take to minimize and mitigate the risks associated with false marking?

Faculty

Nathan Cummings, Partner
Cooley Godward Kronish, Reston, Va.

He focuses on intellectual property litigation, with a particular emphasis on patent litigation. He counsels high-technology clients in all aspects of patent matters, including patent procurement, licensing, infringement, validity, enforceability and patent portfolio analysis.

Robert W. Unikel, Partner
Howrey, Chicago

He litigates complex patent cases, as well as cases involving trade secrets, trademarks, trade dress and other forms of intellectual property. He has successfully defended against claims of false patent marking under 35 U.S.C. §292; and has managed disputes involving various well-known trademarks and myriad trade dress implicating product and packaging designs and non-traditional source indicators.

Ordering

Online CLE - Audio Recording

Includes audio streaming of full program plus handouts (available 24 hours after live seminar).

CLE: Pre-approved for participatory or non-traditional/alternate format credit in: CA, HI*, NY*, WV*. Pre-approved for self-study credit in: AK, AZ, MO, MT, TX, VT, WA.
Upon request, also available in: CO, CT*, FL, GA, ID, KY, LA*, ME, NC, ND, NE, NH, NM, NV, OR*, SC, TN, UT, WI*, WY. If you are applying for credit in one of these states, make sure to select those states when placing your order.
(*Indicates that Strafford must report attendance.)

Online CLE Audio $297.00
Available 24 hours after the live event

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Recorded Event

Includes full event recording plus handouts (available after live seminar).

CLE: Pre-approved for self-study credit in: AK, AZ, CA, CT, HI, MO, MT, NY, TX, VT, WA, WV. Upon request, self-study credit is also available in: CO, FL, GA, ID, KY, ME, ND, NE, NH, NM, NV, OR, UT, WI, WY. If you are applying for self-study credit in one of these states, contact Strafford CLE at 1-800-926-7926 ext. 35 or CLE@straffordpub.com.

Webinar Download (Slide Presentation with Audio) $297.00
Available three business days after the live event

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DVD (Slide Presentation with Audio) $297.00 plus $9.45 S&H
Available ten business days after the live event

MP3 Download (Audio with Slide PDFs) $297.00
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Available ten business days after the live event

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Program Materials

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Program Materials

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Customer Reviews

This was my first experience with an interactive CLE.  It was good not to have to leave my office for the program.

Patricia Hays

Vestcom International

Convenient and well-organized.  Well-run program.

Michael V. Kruljac

IMERYS

We were given simple and clear answers to complex questions, lots to work with.

Patrick R. Kelly

Glenn, Feldmann, Darby & Goodlatte

I was impressed with the examples and the practical applications of the concepts.

Connie Sue Martin

Bullivant Houser Bailey

I received complicated information in an uncomplicated, concise and understandable manner.

Alice Mercado

Lemons, Grundy & Eisenberg

Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Hung H. Bui

Partner

Antonelli Terry Stout & Kraus

Irah H. Donner

Partner

Stroock & Stroock & Lavan

Ian N. Feinberg

Partner

Mayer Brown

Anthony J. Fitzpatrick

Partner

Duane Morris

Craig P. Opperman

Partner

Reed Smith

David Segal

Partner

Gibson Dunn & Crutcher

Jeffrey R. Seul

Partner

Holland + Knight

Astrid R. Spain

Partner

McDermott Will & Emery

Mark P. Wine

Partner

Orrick

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