Changes to Patent Marking Under the America Invents Act (AIA)

Marking Requirements

In a patent infringement suit, the patentee can only recover damages for infringement that occurred after the infringer had notice of an existing patent.  35 U.S.C. § 287.  Notice can be accomplished a number of ways: sending a warning letter, filing an infringement lawsuit, or marking the product as patented.  Marking the product is often a good way to put an infringer on notice because it puts an infringer on notice early in time.  The AIA did not change the marking requirement for infringement cases, but it did make significant changes to what qualifies as a mark under the statute.

Under the old patent statute, for a product to be properly marked, the product itself had to be marked with words “patent” or “pat.” along with the patent number that covers the product.  Under the AIA, the product the product still must be marked with either “patent” or “pat.,” but the seller has the option of marking the product with the patent number or a virtual mark.  A virtual mark is a website address that lists the patents that cover the product.  A seller now has the option of marking the product “Patent No. 8,000,000” or “Pat. www.businessname.com/patent.”  For the virtual mark to qualify under the statute, the website must be accessible to the public for free.  Virtual marking has a tremendous advantage over the old statute because new patents issue and old patents expire.  Now, the seller no longer has to potentially disrupt the product line by changing the mark on a product anytime a patent issues or expires.  The seller can simply update the patent information on the website.

Some examples of virtual markings-

http://www.callawaygolf.com/global/en-us/legal/callaway-golf-patents.html

http://www.kimberly-clark.com/ourcompany/innovations/patents.aspx

http://www.tivo.com/legal/patents

http://www.bunn.com/patents/

So, even with the new AIA rules, the marking must be on the product, unless it is impossible or impractical to mark the product.  If the product cannot be marked, then the mark can be on the packaging.  Courts have been strict with this requirement.   In one case, the court held that marking the packaging did not meet the requirements of the statute if the product itself could be feasibly marked. Belden Tech Inc. v. Superior Essex Comm’ns LP 733 F.Supp.2d 517 (2010).

The AIA did not change the rules for marks of licensors either.  If a patentee licenses a product, the patentee must be diligent to ensure that the licensee marks the product.  Courts recognize that patent owners do not have total control over the licensees and will apply the rule of reason in deciding if the patent owner complied with the marking statute. Maxwell v. J. Baker Inc. 39 USPQ2d 1001 (Fed. Cir. 1996).

Lastly, the AIA marking statute did not change the rule that marking does not apply to method claims because there is no tangible product to mark.  Bandag, Inc. v. Gerrard Tire Co., Inc., 704 F.2d 1578, 1581 (Fed. Cir. 1983).

False Marking

Before the AIA, a manufacturer could not affix the words “patent” or “patent pending” to a product if the product was not covered under a patent or the manufacturer had not applied for a patent.  Anyone who falsely marked a product as patented with the intent to deceive the public was subject to a fine.  The maximum fine was $500 per offense.  Under the AIA, this rule is still in effect, but the AIA significantly changed how this rule is enforced.  35 U.S.C. § 292.

Prior to the AIA, any citizen could bring a suit to enforce the false marking statute in a qui tam action.  Half the money would go to the citizen who brought the suit and the other half would go to the U.S. government.  There were very few cases of suits brought under this statute until 2009 when the Federal Circuit ruled that that $500 per offense meant $500 per unit sold, not per product.  Forest Group v. Bon Tool Co. 590 F.3d 1295 (2009).  This ruling began a flood of cases, especially since patent markings for patents that had expired were considered false markings under the statute.  Small entities would use the statute to force large companies into settlements.  A particularly absurd example of a suit under this rule was Pequignot v. Solo Cup Co. 608 F.3d 1356 (2010).  Solo marked cups by molding the number into the cup.  It would have been expensive and burdensome to replace the molds, so Solo continued to produce cups marked with an expired patent number.  Solo manufactured 21.8 billion cups with the expired mark, meaning Solo faced a potential fine of $10.8 trillion dollars.  Fortunately, some measure of common sense applied and the court found that Solo did not intend to deceive the public with a false marking.

In response to cases like the Solo case, the AIA no longer allows qui tam suits—only the U.S. government can bring a suit under the false marking statute.  Furthermore, under the AIA, marking a product with a patent number that once covered the product, but has since expired, is no longer a violation of the false marking statute.

A person may still file a civil lawsuit under the false marking statute, if the plaintiff can show a competitive injury due to the false mark.  But, the plaintiff will only be entitled to damages to compensate for the actual injury, not statutory damages.

If you have an issue or question about the rules of patent marking, do not hesitate to contact our offices.  We are patent attorneys based in San Diego, California.  We also have offices in Los Angeles: http://www.pacificpatentlawyers.com/