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Fish Principals Author The Licensing Journal Article "Patent Licensing"

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When a patentee enters into an agreement with a third party that does not expressly include a pat­ent license (e.g., a covenant not to sue between a non-practicing patentee and a third-party practicing entity), does that agreement render the third party's products a "patented article" that requires marking? Although it does not appear that the Federal Circuit has spoken squarely on the scope of what kinds of agreements are subject to Section 287(a), most district courts have answered this question in the affirmative. However, when unrelated third-party licensees are involved, courts may apply a fact-inten­sive analysis to determine if the patentee made reasonable efforts to comply with the marking requirement.

Read more in The Licensing Journal.

Co-Authored by: Nicole Williams

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