Bernard Cryan has now published a very interesting paper, a draft of which I previously mentioned here, titled Not All Patent Licensees Are the Same: 35 U.S.C. § 287 Should Not Require Marking by Licensees That Deny Infringement, 101 J. Pat. & Trademark Off. Soc'y 531 (2021). (This journal halted publication for a period of time from 2019-21, but is back up and running, as Dennis Crouch reported here. The journal is not available open-access, but you can access it via Westlaw or Hein Online.) Here is the abstract to Mr. Cryan’s article:
Current patent marking law requires all licensees--even those that deny infringement--to comply with 35 U.S.C. § 287. This requirement has several undesirable consequences such as discouraging settlement agreements. Not all licensees, however, are the same. Patent marking law fails to recognize that “no-admission licensees”--patent licensees who deny infringement and do not believe they need a license but agree to a license anyway--should be treated differently. The Federal Circuit can and should correct this flaw by (1) holding that a patentee can satisfy the “reasonable efforts” requirement under the Arctic Cat rule of reason analysis by making no efforts or minimal efforts to ensure its no-admission licensees comply with the marking requirements of § 287, or (2) holding that a no-admission licensee does not act “for or under” the patentee for § 287 purposes. Both solutions allow a patentee to provide constructive notice even if its no-admission licensees did not mark. Further, the Federal Circuit can adopt the five-factor test proposed below to distinguish between no-admission and traditional licensees. The proposed solutions leave the law undisturbed with respect to traditional licensees. Although the no-admission licensee situation may arise only infrequently, addressing the issue will help the patent system.
I should note that Mr. Cryan, one of my former students, is a recent graduate of the University of Minnesota Law School. And another former student and graduate from a few years ago, Jasper Tran, also has an article in this same issue of JPTOS, titled Alice at Seven., 101 J. Pat. & Trademark Off. Soc’y 454 (2021).