You may not believe it, but in her spare time, this IPCopy writer does occasionally turn to pursuits other than combing through Unitary Patent legislation (no, really). Not so long ago, she was perusing the website of Gretsch® guitars, on the brink of doing some damage to her wallet, and stumbled across something that caught her eye*.

Gretsch® has been around since the 1880s, and started out making banjos and ukuleles, soon progressing to guitars. Today, they  focus on vintage-style guitars,  some being recreations of earlier instruments. Why on earth might you care about this? Well, recreating the appearance of  a vintage instrument is relevant to the important subject of patent marking (no, really).

Gretsch® have a number of ‘historic’ (i.e. long-lapsed) patents, a selection of which you can enjoy here. Back in the day, the original guitars were diligently marked with the relevant patent numbers.

Marking patented goods with the patent number or application number in this way is good practice because it alerts customers and competitors to the fact that the product is patented (or that a patent is pending). If an infringement action is successful, in awarding damages and/or costs many courts consider whether the infringement was ‘willful’ or ‘knowing’ (the US and the UK being courts two of them); marking products with a patent number means that the infringer cannot claim to have been unaware of the patent in question, and hence the infringement is more likely to be considered willful or knowing, and damages and/or costs awards will generally be higher.

To mimic the appearance of the original vintage guitars faithfully, Gretsch® mark their recreation guitars with the same patent numbers. The patents in question have, of course, lapsed.

This could potentially cause Gretsch® some difficulties – In many countries, it is an offence to mark a product as patented (or ‘patent pending’) when it is, in fact unpatented; either because it does not fall within the claims of the indicated patent, or because the indicated patent has expired or lapsed**. In recent years this has been a particular issue in the US, with many cases being brought to court by non-practicing entities looking to cash-in with false marking suits, although changes resulting from the new America Invents Act (AIA) have reduced the appetite for this type of litigation.

So where do the historic patent markings leave Gretsch® in relation to the hazards of false marking?

To mitigate any confusion over their patent marking Gretsch® have the following notice on their website, which is what caught this IPCopy writer’s eye as her mouse hovered over the ‘purchase now’ icon:

NOTICE REGARDING USE OF HISTORIC PATENT NUMBERS/MARKINGS: Some GRETSCH® products are intentional recreations or reissues of vintage guitars and guitar components, and may therefore incorporate markings or text associated with original patents that have since expired. Specific examples of such models include patent numbers on certain FILTER’TRON™ pickups and patent numbers on BIGSBY® tailpieces. Such markings are included only for the sake of historical accuracy, and are not intended to denote or imply live patents or ongoing patent protection.

You might notce similar notices from other guitar manufacturers – Fender, for example have an almost identical notice.

So, is this sufficient to overcome any potential false marking issues? This IPCopy writer is unsure, and would be interested to hear your thoughts.

From a quick look through the changes that were brought in with the AIA, it seems to me that Gretsch® could be let off the hook even without the notice; if a product would have been covered by the marked patent, but the patent has now expired, this is no longer considered to be false marking. If this is correct, then as long as the reproduction product would have been covered by that original patent, all is well. Are then any US attorney’s out there that can offer a view?

In the UK? Well, there is no explicit get-out clause for expired patents in the UK Patents Act, so on the face of it, this could still be considered as false marking. Is the website notice enough to solve the problem? There is clearly no intention to deceive anyone into thinking that the patents in question still cover the products, and it would be difficult to argue that any damage had been done to competitors as a result of the marking. This writer’s hunch is that it would be a harsh judge who decided there was a problem with this approach. From a quick rifle through case law, judgements on this point appear to be lacking – IPCopy would be interested to know if anyone knows of anything relevant.

All-in-all, though, a thumbs up to Gretsch® for their faithful vintage replicas, and for taking care with their patent marking. Both things keep this IPCopy Writer happy.

Emily Weal   May 2013

*Something, that is, other than the Jim Dandy Parlor guitar that ultimately found itself arriving at her front door a week later. Which, incidentally, is a definite hit.

**The law on this varies amongst countries. Best to head to your patent attorney for specific advice on this if patent marking is relevant to you!