IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more · Rolf Claessen and Ken Suzan

Virtual Patent Marking – Patent Damages – Interview with Tina Dorr and Loretta Freeman – Amazon Patent Evaluation Express (APEX) Program – IP Fridays – Episode 155

·33 min·3 clips

Tina Doerr reveals how patent marking can unlock monetary damages for infringement, even if it's optional.

This episode of IP Fridays features patent attorneys Tina Doerr and Loretta Freeman from Barnes & Thornburg discussing patent marking and damages. Hosts Ken Suzanne and Rolf Clayson interview the partners about legal strategies for intellectual property protection. The conversation provides practical guidance for patent owners and legal practitioners. Tina Doerr explains that patent marking is optional but provides constructive notice, enabling damage recovery from infringement starting at the marking date. She details two marking methods: physically labeling a product with "PAT" or the patent number, or sending a written notice to a potential infringer. Loretta Freeman outlines factors for choosing virtual patent marking, like cost-effectiveness for companies with large portfolios or small products. She notes companies must ensure their virtual marking URL remains functional and updated. Freeman emphasizes that false marking, such as labeling a product with an incorrect or expired patent, carries legal liability. She references the Solo Cup lawsuit, which led Congress to amend laws in 2011, excluding expired patents from false marking claims. Doerr describes three main damage types in infringement cases: reasonable royalties, lost profits, and enhanced treble damages for willful infringement. She states damages can reach millions or billions of dollars. A key insight is that marking is only effective if "substantially all" patented products sold are consistently marked. Doerr advises defendants in infringement suits to check for consistent marking, as failures can lead to early case dismissal. Freeman highlights the importance of internal coordination, urging legal teams to work with R&D and management to correctly link patents to products. She recommends regular audits of virtual marking websites to maintain accuracy. Doerr points out a common pitfall where marketing teams maintaining virtual patent websites lack communication with R&D, risking inaccurate marking. Both attorneys stress that licensing or selling patents requires clear agreements on who maintains marking obligations. Freeman suggests companies with multiple divisions might need separate URLs for different product lines to simplify management and potential divestitures. The episode maintains an educational and conversational tone, blending legal explanation with practical advice from experienced practitioners. It is structured as an interview, with hosts posing specific questions to the guests about procedural details and case studies. The style is technical yet accessible, aimed at demystifying complex patent law topics for a professional audience. This episode is ideal for in-house counsel, patent attorneys, and business owners managing patent portfolios who seek to optimize marking strategies and understand damage calculations. Startups and inventors will find the discussion on virtual marking costs and compliance particularly valuable. Listeners seeking broad IP strategy or non-patent topics like copyright might find the technical focus too narrow.

As heard by us

A practical patent-marking discussion with real business consequences.

Episode 155 of IP Fridays keeps its focus on patent marking and damages in patent infringement lawsuits, while also tracing how Tina Doerr and Loretta Freeman of Barnes & Thornburg came into patent work.

Read the full review in PlayNext →

Why you'd press play

Patent marking, damages, and Amazon's APEX program, with practical cost and notice tradeoffs.

Read the full recommendation in PlayNext →

Listen to the show on

Apple Podcasts Spotify

Play clips from this episode More from IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more