35 U.S.C. § 287 : US Code - Section 287: Limitation on damages and other remedies; marking and notice

Search 35 U.S.C. § 287 : US Code - Section 287: Limitation on damages and other remedies; marking and notice

(a) Patentees, and persons making, offering for sale, or selling
within the United States any patented article for or under them, or
importing any patented article into the United States, may give
notice to the public that the same is patented, either by fixing
thereon the word "patent" or the abbreviation "pat.", together with
the number of the patent, or when, from the character of the
article, this can not be done, by fixing to it, or to the package
wherein one or more of them is contained, a label containing a like
notice. In the event of failure so to mark, no damages shall be
recovered by the patentee in any action for infringement, except on
proof that the infringer was notified of the infringement and
continued to infringe thereafter, in which event damages may be
recovered only for infringement occurring after such notice. Filing
of an action for infringement shall constitute such notice.
(b)(1) An infringer under section 271(g) shall be subject to all
the provisions of this title relating to damages and injunctions
except to the extent those remedies are modified by this subsection
or section 9006 of the Process Patent Amendments Act of 1988. The
modifications of remedies provided in this subsection shall not be
available to any person who -
(A) practiced the patented process;
(B) owns or controls, or is owned or controlled by, the person
who practiced the patented process; or
(C) had knowledge before the infringement that a patented
process was used to make the product the importation, use, offer
for sale, or sale of which constitutes the infringement.
(2) No remedies for infringement under section 271(g) of this
title shall be available with respect to any product in the
possession of, or in transit to, the person subject to liability
under such section before that person had notice of infringement
with respect to that product. The person subject to liability shall
bear the burden of proving any such possession or transit.
(3)(A) In making a determination with respect to the remedy in an
action brought for infringement under section 271(g), the court
shall consider -
(i) the good faith demonstrated by the defendant with respect
to a request for disclosure,
(ii) the good faith demonstrated by the plaintiff with respect
to a request for disclosure, and
(iii) the need to restore the exclusive rights secured by the
patent.
(B) For purposes of subparagraph (A), the following are evidence
of good faith:
(i) a request for disclosure made by the defendant;
(ii) a response within a reasonable time by the person
receiving the request for disclosure; and
(iii) the submission of the response by the defendant to the
manufacturer, or if the manufacturer is not known, to the
supplier, of the product to be purchased by the defendant,
together with a request for a written statement that the process
claimed in any patent disclosed in the response is not used to
produce such product.
The failure to perform any acts described in the preceding sentence
is evidence of absence of good faith unless there are mitigating
circumstances. Mitigating circumstances include the case in which,
due to the nature of the product, the number of sources for the
product, or like commercial circumstances, a request for disclosure
is not necessary or practicable to avoid infringement.
(4)(A) For purposes of this subsection, a "request for
disclosure" means a written request made to a person then engaged
in the manufacture of a product to identify all process patents
owned by or licensed to that person, as of the time of the request,
that the person then reasonably believes could be asserted to be
infringed under section 271(g) if that product were imported into,
or sold, offered for sale, or used in, the United States by an
unauthorized person. A request for disclosure is further limited to
a request -
(i) which is made by a person regularly engaged in the United
States in the sale of the same type of products as those
manufactured by the person to whom the request is directed, or
which includes facts showing that the person making the request
plans to engage in the sale of such products in the United
States;
(ii) which is made by such person before the person's first
importation, use, offer for sale, or sale of units of the product
produced by an infringing process and before the person had
notice of infringement with respect to the product; and
(iii) which includes a representation by the person making the
request that such person will promptly submit the patents
identified pursuant to the request to the manufacturer, or if the
manufacturer is not known, to the supplier, of the product to be
purchased by the person making the request, and will request from
that manufacturer or supplier a written statement that none of
the processes claimed in those patents is used in the manufacture
of the product.
(B) In the case of a request for disclosure received by a person
to whom a patent is licensed, that person shall either identify the
patent or promptly notify the licensor of the request for
disclosure.
(C) A person who has marked, in the manner prescribed by
subsection (a), the number of the process patent on all products
made by the patented process which have been offered for sale or
sold by that person in the United States, or imported by the person
into the United States, before a request for disclosure is received
is not required to respond to the request for disclosure. For
purposes of the preceding sentence, the term "all products" does
not include products made before the effective date of the Process
Patent Amendments Act of 1988.
(5)(A) For purposes of this subsection, notice of infringement
means actual knowledge, or receipt by a person of a written
notification, or a combination thereof, of information sufficient
to persuade a reasonable person that it is likely that a product
was made by a process patented in the United States.
(B) A written notification from the patent holder charging a
person with infringement shall specify the patented process alleged
to have been used and the reasons for a good faith belief that such
process was used. The patent holder shall include in the
notification such information as is reasonably necessary to explain
fairly the patent holder's belief, except that the patent holder is
not required to disclose any trade secret information.
(C) A person who receives a written notification described in
subparagraph (B) or a written response to a request for disclosure
described in paragraph (4) shall be deemed to have notice of
infringement with respect to any patent referred to in such written
notification or response unless that person, absent mitigating
circumstances -
(i) promptly transmits the written notification or response to
the manufacturer or, if the manufacturer is not known, to the
supplier, of the product purchased or to be purchased by that
person; and
(ii) receives a written statement from the manufacturer or
supplier which on its face sets forth a well grounded factual
basis for a belief that the identified patents are not infringed.
(D) For purposes of this subsection, a person who obtains a
product made by a process patented in the United States in a
quantity which is abnormally large in relation to the volume of
business of such person or an efficient inventory level shall be
rebuttably presumed to have actual knowledge that the product was
made by such patented process.
(6) A person who receives a response to a request for disclosure
under this subsection shall pay to the person to whom the request
was made a reasonable fee to cover actual costs incurred in
complying with the request, which may not exceed the cost of a
commercially available automated patent search of the matter
involved, but in no case more than $500.
(c)(1) With respect to a medical practitioner's performance of a
medical activity that constitutes an infringement under section
271(a) or (b) of this title, the provisions of sections 281, 283,
284, and 285 of this title shall not apply against the medical
practitioner or against a related health care entity with respect
to such medical activity.
(2) For the purposes of this subsection:
(A) the term "medical activity" means the performance of a
medical or surgical procedure on a body, but shall not include
(i) the use of a patented machine, manufacture, or composition of
matter in violation of such patent, (ii) the practice of a
patented use of a composition of matter in violation of such
patent, or (iii) the practice of a process in violation of a
biotechnology patent.
(B) the term "medical practitioner" means any natural person
who is licensed by a State to provide the medical activity
described in subsection (c)(1) or who is acting under the
direction of such person in the performance of the medical
activity.
(C) the term "related health care entity" shall mean an entity
with which a medical practitioner has a professional affiliation
under which the medical practitioner performs the medical
activity, including but not limited to a nursing home, hospital,
university, medical school, health maintenance organization,
group medical practice, or a medical clinic.
(D) the term "professional affiliation" shall mean staff
privileges, medical staff membership, employment or contractual
relationship, partnership or ownership interest, academic
appointment, or other affiliation under which a medical
practitioner provides the medical activity on behalf of, or in
association with, the health care entity.
(E) the term "body" shall mean a human body, organ or cadaver,
or a nonhuman animal used in medical research or instruction
directly relating to the treatment of humans.
(F) the term "patented use of a composition of matter" does not
include a claim for a method of performing a medical or surgical
procedure on a body that recites the use of a composition of
matter where the use of that composition of matter does not
directly contribute to achievement of the objective of the
claimed method.
(G) the term "State" shall mean any state (!1) or territory of
the United States, the District of Columbia, and the Commonwealth
of Puerto Rico.
(3) This subsection does not apply to the activities of any
person, or employee or agent of such person (regardless of whether
such person is a tax exempt organization under section 501(c) of
the Internal Revenue Code), who is engaged in the commercial
development, manufacture, sale, importation, or distribution of a
machine, manufacture, or composition of matter or the provision of
pharmacy or clinical laboratory services (other than clinical
laboratory services provided in a physician's office), where such
activities are:
(A) directly related to the commercial development,
manufacture, sale, importation, or distribution of a machine,
manufacture, or composition of matter or the provision of
pharmacy or clinical laboratory services (other than clinical
laboratory services provided in a physician's office), and
(B) regulated under the Federal Food, Drug, and Cosmetic Act,
the Public Health Service Act, or the Clinical Laboratories
Improvement Act.
(4) This subsection shall not apply to any patent issued based on
an application the earliest effective filing date of which is prior
to September 30, 1996.