Virtual Patent Marking

What is Patent Marking?

Under 35 U.S.C. § 287, a patent owner can only collect monetary reward for the infringement of his patent rights if the patent owner provides adequate notice to the infringer of those patent rights. Failure to comply with the patent marking and notice requirements of US Patent law can be a costly oversight for patent owners.

Physical products may be marked with corresponding Patent Numbers that have been granted on the product.  But what if your product is a virtual product such as, for instance, a computer software, a web-app, a mobile app, or something similar?

In response to these questions, the Recent Patent Law changes permit a patentee to put the public on constructive notice via “virtual marking.”  A virtual marking may comprise a web-page listing a company’s products and their corresponding patents associated with those products.  The web-page must be accessible to a user of those products.

In response to these new laws, SmartUp(R) provides the latest product, such as the Patent Seal(TM), to meet the marking requirements.

(1) Constructive Notice vs. Actual Notice

Under 35 U.S.C. § 287, a patent owner can collect damages for an infringing product only if adequate notice is given of the patent(s) at issue. Adequate notice, as provided by the America Invents Act can come in two forms “constructive notice” and “actual notice”.

Actual notice occurs when an alleged infringer is notified by the patent holder that the infringer’s products infringe on the patent held by the owner.

Constructive notice is occurs when the products are physically labeled with a patent number corresponding to the product.  The AIA permits a patentee to put the public on constructive notice via “virtual marking.” This “virtual marking” is satisfied by the word “patent” or abbreviation “pat.” on the product followed by an internet address at which the patented article is associated to one or more patent numbers.

(2) Complying with the Marking Requirement

A product must be marked with all applicable patent numbers that the patent owner makes, sells, or licenses.  A patent owner must also take “reasonable steps” to ensure that any and all licensees of the patent are marking their covered products.

This includes demanding that any non-compliant licensee the patentee discovers properly mark its product(s). Nevertheless, maintaining 100% compliance by all licensees may not always be feasible. A failure by a licensee to properly mark is thus not necessarily fatal, so long as there is “substantial compliance” with the marking statute. That being said, the patent owner should consistently monitor its licensees’ activities to the extent practicable to ensure they comply with the marking requirements.

(3) Package Mark v. Product Mark

The law provides for alternative forms of marking if marking the product itself “cannot be done,” as stated in the text of the law itself.  Although it is best practice to always mark the product and provide a website with patent details corresponding to the patented product, patent owners may satisfy the marking requirements by marking the product packaging.  Sometimes, the size of the product itself renders marking unfeasible.  Other times, the expense in marking the product is disproportionate to the cost of the product itself.

The language of the statute is strict, stating that marking the packaging is acceptable only if marking the product “cannot be done.” A good way of assessing whether or not the product marking “cannot be done” is to look at third party products and see if those have been marked.  In one legal case, for example, a cable maker was not entitled to certain monetary recovery because it put the patent number on the cable packaging rather than on the cable itself.

(4) Complying with the Marking Requirement

A patent owner who makes and/or sells a product covered by a patent must mark that product with all applicable patent numbers.  A patent owner must also take “reasonable steps” to ensure that any and all licensees of the patent are marking their covered products.

(5) Virtual Marking

Virtual marking satisfies the “Constructive Notice” aspect of the law.  It also provides many benefits over traditional patent marking. The most significant benefit is in the patent owner’s avoidance of the expense and effort required to update and maintain patent information on its products.  It’s much easier to update a “virtual marking” website than it is to undergo the manufacturing process to mark patented products.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri