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Let's say that company A announces a product that infringes a patent of company B. Company A makes marketing actions (promotion, future customer acquisition and so on) but doesn't sell yet the product to consumers. Those actions cause damages to company B.

Then company A changes slightly the product to escape the patent scope and starts selling the product leveraging the benefits of the marketing actions.

Is there a title US code under which company B can sue company A?

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Direct patent infringement includes making, selling, importing and using - so far they are ok - and offering for sale, not ok.

From one law firms blog talking about a specific case -

The Patent Law lists 'offering to sell' as an act of patent infringement in order to give patentees the right to prevent other parties from offering their goods for sale and not merely act once such goods have been sold. Patentees will benefit from protecting their legitimate rights and interests more promptly and efficiently. Mediking's business scope and its affiliated production enterprise proves that it is a drug production company. According to business practice, publicising an accused product by introducing it on an official website obviously promotes the product, thus constituting an offer of sale. By listing the products and their status on the exhibition boards and brochures, Mediking ultimately publicised and promoted the products.

I imagine there could be restraint of trade issues if they had large market share.

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  • Thank you for replying. "Restraint of trade" is an interesting concept. I see your point.
    – John Smith
    Jan 12 at 1:21
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    I'm not sure to completely understand the first sentence. How does a court define "offering for sale"? Why are you saying 'not ok'. can marketing actions such as future customer acquisition be considered as "offering for sale"?
    – John Smith
    Jan 12 at 1:23
  • Advertisements are not typically considered as offers as they cannot be accepted, and the seller (offeror) may opt to not sell (or perform as advertised); they are treated merely as invitations to bargain. (1 Corbin on Contracts (1963) § 25, pp. 74-75; Rest.2d, Contracts, § 26, com. b, at p. 76.) If the advertisement does not require acceptance by the offeror, and calls for action by another, and the other merely has to carry out the act, that creates a unilateral contract upon the “advertiser”, the offeror, in such case an ad maybe an “offering for sale”.
    – kisspuska
    Jan 12 at 4:40
  • For the purposes of the Patent Law referenced by @George White, a broader definition may apply.
    – kisspuska
    Jan 12 at 4:43
  • I think it is broader but I have not found a clear case or law review article that is on point. Jan 12 at 7:03
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Presuming that Company A manages to steer clear of patent infringement, for e.g., 15 U.S.C. § 43(a)(3)(B), provides remedies for unfair methods and practices in commerce.

If, for example, Company A was never intended to actually put any product in the stream of commerce that it previously marketed, and the follow up product does not provide the benefits of the patented invention of Company B, that is arguably fraud, an unfair method or practice. (Company B would have standing, for example, because deceiving consumers and fraudulently selling them a product that was marketed as the patentee’s invention arguably affects commerce in reducing the pool of potential buyers from Company B; other fact patterns may have similar outcomes, too)

Also, many if not most States also have their own false advertising and unfair business practices acts providing slightly different criteria across the country so a suit may include causes of action based on federal and/or one or more states laws in this regard.

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