B-148376, OCT. 12, 1962
Highlights
TO SPECIALTY ELECTRONICS DEVELOPMENT CORPORATION: REFERENCE IS MADE TO YOUR LETTER OF AUGUST 21. YOU STATE IN YOUR LETTER THAT WHILE IT IS TRUE "THAT WE HAVE SOLD THOUSANDS OF THESE CONNECTORS TO THE SIGNAL CORPS AND TO GOVERNMENT PRIME AND SUB-CONTRACTORS. IN ALL CASES THE CONNECTORS SOLD WERE PERMANENTLY MARKED WITH THE NAME OF THE MANUFACTURER. PATENT PENDING.'" YOU ALLEGE THAT THIS MARKING HAS CLEARLY CALLED TO THE ATTENTION OF THE USERS THAT THE CONNECTORS ARE A PROPRIETARY PRODUCT AND THAT STEPS HAVE BEEN TAKEN BY YOUR COMPANY TO PROTECT ITS RIGHTS BY THE ISSUANCE OF A PATENT. ON THIS BASIS YOU URGE THAT OUR DETERMINATION THAT THE GOVERNMENT PROCURED AND RECEIVED THE ITEMS DELIVERED FREE OF ANY RESTRICTION ON THEIR USE "IS INCORRECT SINCE EACH ITEM SOLD BY OUR COMPANY WAS MARKED AS NOTED ABOVE.'.
B-148376, OCT. 12, 1962
TO SPECIALTY ELECTRONICS DEVELOPMENT CORPORATION:
REFERENCE IS MADE TO YOUR LETTER OF AUGUST 21, 1962, REQUESTING RECONSIDERATION OF OUR DECISION DATED JULY 24, 1962, WHICH DENIED YOUR PROTEST AGAINST THE AWARD OF A CONTRACT UNDER IFB SC-36-039-62-1657-04 ISSUED FEBRUARY 20, 1962, BY THE U.S. ARMY SIGNAL SUPPLY AGENCY, PHILADELPHIA, PENNSYLVANIA.
YOU STATE IN YOUR LETTER THAT WHILE IT IS TRUE "THAT WE HAVE SOLD THOUSANDS OF THESE CONNECTORS TO THE SIGNAL CORPS AND TO GOVERNMENT PRIME AND SUB-CONTRACTORS, IN ALL CASES THE CONNECTORS SOLD WERE PERMANENTLY MARKED WITH THE NAME OF THE MANUFACTURER, NAMELY SPECIALTY, AND THE WORDS ,PATENT PENDING.'" YOU ALLEGE THAT THIS MARKING HAS CLEARLY CALLED TO THE ATTENTION OF THE USERS THAT THE CONNECTORS ARE A PROPRIETARY PRODUCT AND THAT STEPS HAVE BEEN TAKEN BY YOUR COMPANY TO PROTECT ITS RIGHTS BY THE ISSUANCE OF A PATENT. ON THIS BASIS YOU URGE THAT OUR DETERMINATION THAT THE GOVERNMENT PROCURED AND RECEIVED THE ITEMS DELIVERED FREE OF ANY RESTRICTION ON THEIR USE "IS INCORRECT SINCE EACH ITEM SOLD BY OUR COMPANY WAS MARKED AS NOTED ABOVE.'
THE FACT THAT THE CONNECTORS IN QUESTION HAD BEEN MARKED AS YOU HAVE INDICATED WAS NOT MENTIONED IN YOUR PROTEST NOR WAS IT MADE KNOWN IN THE AVAILABLE RECORD. THE MARKINGS WERE PLACED ON THE ITEMS NO DOUBT IN ACCORDANCE WITH THE PROVISIONS OF THE "MARKING STATUTE" NOW CARRIED IN 35 U.S.C. 287. THESE STATUTORY PROVISIONS AFFORD A METHOD OF GIVING NOTICE TO THE PUBLIC THAT THE ITEM MAY BE PROTECTED BY A PATENT AND PROVIDE THAT 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.
THE RECORD DISCLOSES THAT YOU HAD GIVEN ACTUAL NOTICE TO THE GOVERNMENT THAT THE PATENT APPLICATION HAD BEEN FILED. FURTHERMORE, IT SEEMS WELL ESTABLISHED THAT THE MARKINGS DO NOT CONSTITUTE A RESTRICTION ON THE USE OF THE ITEMS BUT MERELY A NOTICE OF POSSIBLE LIABILITY FOR PATENT INFRINGEMENT. CF. STEINTHAL V. ARLINGTON SAMPLE BOOK CO., 34 C.C.A., FEBRUARY 4, 1938, 94 F.2D 748.
FROM A CAREFUL CONSIDERATION OF THE ADDITIONAL INFORMATION FURNISHED IN YOUR LETTER WE FIND NO BASIS FOR MODIFYING OUR PRIOR DECISION WHICH IS AFFIRMED.