Monthly Archives: April 2010

Jackie Hutter Speaking at the Minneapolis May LES Meeting

I love meeting my online friends and collaborators IRL (“in real life”).  If any of you are located in the Minneapolis area, please consider attending May 11, 2010 LES meeting where I will speak on collection and analysis of patent data.   I am being sponsored by this event by my client Clyde Hanson of Venture Isles.

Here is the information as circulated by Mr. Hanson:

You are welcomed to attend the luncheon even if you are not a member.  Ms. Hutter is an advisor to Venture Isles and we have worked together on many projects.  She is a self-described “recovering patent attorney”, a prolific blogger and a sharp intellect so it will be a high-energy event.  The food is by D’Amico has been consistently good.  Save room for dessert.  Please register at: LES USA/CANADA

How to Properly Collect, Analyze and Leverage Patent Information to Enhance Your Licensing Programs

Speaker: Jackie Hutter, MS, JD    The Hutter Group:  IP Business Strategy

Patent data can provide much value to licensing programs by allowing one to identify potential licensees, partners or infringers.  However, one must know how to collect and analyze such data in a way that provides relevant and actionable insights.  An experienced law firm and corporate lawyer, who is an IP Strategist, will provide instruction and watchouts for those who are currently or who are looking to utilize patent analytics and landscaping products in their organization’s licensing programs.

COST $35

DATE May 11, 2010, Tuesday  11:30 am -1:00 pm

University of Minnesota-Minneapolis Campus

McNamara Alumni Center
200 Oak Street SE
Ski-U-Mah Room
Minneapolis, MN  55455

Much Ado About Patent Marking: Why It is So Hard for Corporations to Get It Right and Why False Marking Lawsuits Might be a Good Thing Overall

Misalignment between patent and business functions is the underlying cause of false patent markingIt is fairly rare for patents to make hit the radar screen of mainstream news outlets but, recently, there has been much space allotted to the issue of patent mis-marking and lawsuits being brought by third parties for “violation” of the law requiring that products cannot be marked with an incorrect patent number.  Indeed, the usually substance-free local paper in my mother’s Southwest Florida community reported about the flood of patent mis-marking lawsuits.  And, it is no wonder that the undoubtedly arcane issue of patent marking has reached the status of “news” in a small-town paper given the huge number of cases currently pending in the federal courts.  It seems as if patent marking litigation may be the new business model for trial lawyers who are looking for a new “gravy train” to extract substantial legal fees from corporations whose activities violate the letter (but not necessarily the spirit) of the law.

First, an explanation:  U.S. patent law expressly dictates that products should be marked with the number of patent(s) with claims that cover that same product.  If one does not mark the product, the patentee cannot obtain damages for infringement that occurs either prior to its giving “actual notice” to the infringer (such as by letter or the like) or its bringing of a lawsuit. Moreover, the patentee cannot obtain damages for infringement occurring before actual notice to the infringer. The marking statute not only sets forth and affirmative duty to mark a patented product, it also provides punitive measures for inaccurately marking a product with a patent number.  Specifically, the law states that false marking is punishable by a fine of up to $500 per occurrence.

It is this punitive provision of the law that has given rise to the flood of lawsuits in the last couple of years.   A cynic might view these lawsuits as a new business model for trial lawyers who are feeling the pinch of decreased patent litigation suits.  Others might feel that there is no reason to shed any tears for corporations that cannot get it together enough to mark their products with their patent numbers–that is, how hard can it be, right?

In truth, under existing corporate IP paradigms, it is quite difficult to mark products  correctly.  This blog post provides a practitioner’s eye view to why this is the case.  ( Those seeking more information about the specifics of patent marking should look here and here.  For more on the details of the third party marking lawsuits making the news lately, check here .) Continue reading