§ 287. — Limitation on damages and other remedies; marking and notice.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC287]
TITLE 35--PATENTS
PART III--PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 29--REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS
Sec. 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.
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\1\ So in original. Probably should be capitalized.
(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.
(July 19, 1952, ch. 950, 66 Stat. 813; Pub. L. 100-418, title IX,
Sec. 9004(a), Aug. 23, 1988, 102 Stat. 1564; Pub. L. 103-465, title V,
Sec. 533(b)(5), Dec. 8, 1994, 108 Stat. 4989; Pub. L. 104-208, div. A,
title I, Sec. 101(a) [title VI, Sec. 616], Sept. 30, 1996, 110 Stat.
3009, 3009-67; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,
Sec. 4803], Nov. 29, 1999, 113 Stat. 1536, 1501A-589.)
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., Sec. 49 (R.S. 4900, amended
Feb. 7, 1927, ch. 67, 44 Stat. 1058).
Language is changed. The proviso in the corresponding section of
existing statute is omitted as being temporary in character and now
obsolete.
References in Text
Section 9006 of the Process Patent Amendments Act of 1988, referred
to in subsec. (b)(1), is section 9006 of title IX of Pub. L. 100-418,
which is set out as a note under section 271 of this title.
The effective date of the Process Patent Amendments Act of 1988,
referred to in subsec. (b)(4)(C), is the effective date of title IX of
Pub. L. 100-418. See section 9006 of Pub. L. 100-418, set out as a note
under section 271 of this title.
Section 501(c) of the Internal Revenue Code, referred to in subsec.
(c)(3), is classified to section 501(c) of Title 26, Internal Revenue
Code.
The Federal Food, Drug, and Cosmetic Act, referred to in subsec.
(c)(3)(B), is act June 25, 1938, ch. 675, 52 Stat. 1040, as amended,
which is classified generally to chapter 9 (Sec. 301 et seq.) of Title
21, Food and Drugs. For complete classification of this Act to the Code,
see section 301 of Title 21 and Tables.
The Public Health Service Act, referred to in subsec. (c)(3)(B), is
act July 1, 1944, ch. 373, 58 Stat. 682, as amended, which is classified
generally to chapter 6A (Sec. 201 et seq.) of Title 42, The Public
Health and Welfare. For complete classification of this Act to the Code,
see Short Title note set out under section 201 of Title 42 and Tables.
The Clinical Laboratories Improvement Act, referred to in subsec.
(c)(3)(B), probably means the Clinical Laboratories Improvement Act of
1967, section 5 of Pub. L. 90-174, Dec. 5, 1967, 81 Stat. 536, which
enacted section 263a of Title 42 and enacted provisions set out as notes
under section 263a of Title 42. For complete classification of this Act
to the Code, see Short Title note set out under section 263a of Title 42
and Tables.
Amendments
1999--Subsec. (c)(4). Pub. L. 106-113 substituted ``based on an
application the earliest effective filing date of which is prior to
September 30, 1996'' for ``before the date of enactment of this
subsection''.
1996--Subsec. (c). Pub. L. 104-208 added subsec. (c).
1994--Subsec. (a). Pub. L. 103-465, Sec. 533(b)(5)(A), substituted
``making, offering for sale, or selling within the United States'' for
``making or selling'' and inserted ``or importing any patented article
into the United States,'' after ``under them,''.
Subsec. (b)(1)(C). Pub. L. 103-465, Sec. 533(b)(5)(B)(i),
substituted ``use, offer for sale, or sale'' for ``use, or sale''.
Subsec. (b)(4)(A). Pub. L. 103-465, Sec. 533(b)(5)(B)(ii),
substituted ``sold, offered for sale, or'' for ``sold or'' in
introductory provisions.
Subsec. (b)(4)(A)(ii). Pub. L. 103-465, Sec. 533(b)(5)(B)(iii),
substituted ``use, offer for sale, or sale'' for ``use, or sale''.
Subsec. (b)(4)(C). Pub. L. 103-465, Sec. 533(b)(5)(B)(iv), (v),
substituted ``have been offered for sale or sold'' for ``have been
sold'' and ``United States, or imported by the person into the United
States, before'' for ``United States before''.
1988--Pub. L. 100-418 inserted ``and other remedies'' in section
catchline, designated existing provisions as subsec. (a), and added
subsec. (b).
Effective Date of 1994 Amendment
Amendment by Pub. L. 103-465 effective on date that is one year
after date on which the WTO Agreement enters into force with respect to
the United States [Jan. 1, 1995], with provisions relating to earliest
filed patent application, see section 534(a), (b)(3) of Pub. L. 103-465,
set out as a note under section 154 of this title.
Effective Date of 1988 Amendment
Amendment by Pub. L. 100-418 effective 6 months after Aug. 23, 1988,
and, subject to enumerated exceptions, applicable only with respect to
products made or imported after such effective date, see section 9006 of
Pub. L. 100-418, set out as a note under section 271 of this title.
Section Referred to in Other Sections
This section is referred to in section 157 of this title.
