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If a product listing on a website is noted "PATENT" or "PATENTED", must the patent owner provide patent details such as a patent number when asked for from the general public?

  • 1
    Interesting question. Do you have any reason to believe they do? – DonQuiKong Jun 29 '17 at 6:51
  • Do you have an issue with providing the relevant patent numbers? – Eric Shain Jun 29 '17 at 11:38
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One example that would lead me to believe 'no':

Consider a modern cellphone, which could easily comprise technology covered by 100s of patents. Would it be reasonable for Apple to maintain a list of all the (ever-changing) patents covering their product? Additionally, would they be responsible for listing the patents of the components provided by subcontractors, or the list of subcontractors providing components for their patented iPhone so one could contact them for such information individually? It would seem an onerous requirement, as this would require legal opinion from Apple (what is covered and what is not covered), which can be an expensive effort (e.g. in infringement contentions) and would further open up potential inequitable conduct issues (disclosing too much or not enough).

Another example that would lead me to believe 'no':

If the ultimate intention in having patent disclosure from a company is to know what 'rights' you have when making/selling a product, what about non-practicing entities (NPEs)? Would NPEs be exempt from such a requirement to disclose related patents to potential products (which would be unfair relative to practicing entities), and if not how would one know which NPEs to contact?

Another example that would lead me to believe 'no':

Although this may be outside the scope of your question, assume a product has been marked 'Patent Pending', and one has filed a corresponding provisional application to justify such marking without yet claiming priority to the provisional application. If one were required to disclose the contents of their unpublished provisional, they would forfeit priority rights in 'strict novelty' countries (e.g. Europe), thus losing an intended benefit of a provisional application.


Ultimately, the question is one of equity and public notice, which may be stated with certainty in the statutes or case law.

Although there is risk of going to market only to be struck with infringement suits from unknown patents, potential infringement analysis can't be performed with 100% certainty, as there is always a rolling 18-month window of unpublished patents (assuming they wouldn't have to be disclosed as discussed in the third example). Ultimately, it seems the more equitable policy is to require those desiring freedom to operate perform a search on their own.

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Prima facie (assuming the product or packaging also is not marked as required) the product does not comply marking requirement as in 35 USC 287(a). 35 USC 287(b)3(A) allows a "request for disclosure" right to a person described therein and as in 35 USC 287(b)4(B) the patent owner has to disclose the patent details for which he can charge the requester 35 USC 287(b)6. Argumentitively, any person from the general public can exercise a "request for disclosure". Non-compliance can affect adversely infringement damage claim suit by patent owner if the said person actually wishes to manufacture, sell similar product and eventually does so. Incidentally, non-compliance sends a wrong message and may encourage civil suits under 35 USC 292(b).

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    A very good point indeed. However, I wonder if you might be overstating §287 a little. That is, § 287(a) does not import a duty to mark, but merely provides an option. There are also quite tight restrictions on who can make a request for disclosure (§ 287(b)(4)(A)): certainly the general public is not enough. Moreover, there is no obligation for a patent owner to respond to a request for disclosure, but it is merely "evidence of absence of good faith" (§ 287(b)(3)(B)). Also, I don't see how §292 false marking has anything to do with this: would you be able to expand on that? – Maca Jul 14 '17 at 3:39

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