This article is about patent marking requirements. Proper patent marking is critical for patent owners to be able to fully benefit from issued patents. A valid patent gives its holder the exclusive right to make, use, offer for sale, or sell whatever the patent covers, and to collect damages from anyone who does any of the above without prior authorization. If your invention is a tangible thing (instead of a process for instance), you should mark it—35 U.S.C. § 287(a) provides that failure to mark a patented item will generally preclude Plaintiffs from recovering money damages in any infringement action. A patentee will not be able to collect damages unless they provide notice to the infringer of the infringement.
So, what is ‘marking’ and how does one do it? Marking is the way patentees provide notice to the world that their specific item or product is protected by a patent. It is typically done by affixing to the product (or to the product packaging in the event it cannot be done on the product) the words “patent” or “pat.” along with the patent number.
I hold a patent. Should I mark the product/invention?
If your patent is for a tangible item, then yes, you should definitely mark your product or invention. If you fail to do so, you will only be able to collect money from an infringer for any infringement occurring after you inform them that they are infringing, meaning that any prior infringing activities will go unpunished.
In many cases, patentees license their inventions to manufacturers or distributors. Importantly, the marking requirements do not change just because a licensee, not the patentee, is the actor. Because of this, patentees who have licensed their patents to third parties must always ensure that those third parties comply with the marking requirement.
There are some items that are not tangible in the traditional sense of the word but should be marked nonetheless—consider some software patents. While software is not tangible in the traditional sense, the question of what is a “tangible item” has shifted generally to become “can this item be marked?” If it can be marked, then it must be marked to collect damages.
Where should I mark my invention or product?
Patentees should keep in mind that any marking must be substantially consistent and continuous to provide the public with constructive notice of the patent. American Medical Sys. v. Medical Eng’g Corp., 6 F.3d at 1538. So, what does substantially consistent and continuous mean? Essentially, the patentee needs to mark either the actual product or the product packaging. Providing notice by marking any accompanying documents or other items will not meet the statutory requirements of § 287.
Courts generally prefer marking the actual product itself, but in the event that marking the product is impractical—marking a novel type of hip replacement for instance—some more lax courts will permit patentees to mark the product packaging. Keep in mind that this is not true in every jurisdiction, and any prospective patentee should consult with counsel in their respective district for more guidance on the requirements.
When should I mark it?
Patentees should mark their products or invention prior to releasing them to the public. Each individual unit that fails the marking requirements will not be included in the damage calculations. In the event that public release occurs prior to the patent being granted, patentees should mark their products with “patent pending.” As soon as the patent issues, each subsequent unit should include the patent number or URL (see next section on virtual marking).
How Should I Mark It?
Traditionally, marking has been done as described above—include the word “patent” or “pat.” and the number on the actual product or packaging. However, since the America Invents Act was passed in 2011, patentees have been allowed to “virtually” mark their products—and virtual patent marking is an important mechanism for patent holders to provide notice to the world of their patent rights. The marking statute provides, “[p]atentees … may give notice to the public that the same is patented … by fixing thereon the word ‘patent’ or the abbreviation ‘pat’ together with an address of a posting on the Internet, … that associates the patented article with the numbers of the patent.” 35 U.S.C. § 287(a).
Importantly, the website address must do more than list the patent numbers that may apply to various products—it needs to create an association between a specific number and a specific item. Anything short of this does not provide notice, but rather creates “a research project for the public.” Mfg. Res. Int’l v. Civiq Smartscopes, LLC, Case No. 17-269, 2019 U.S. Dist. LEXIS 146060, at 30-31.
Virtual marking has become the norm for many products because of the wide range of benefits it provides. Since it is much easier to update a website than an actual marking on a product, many patentees opt for virtual marking. Patentees who do opt for virtual marking should periodically check and update their patent listing site to ensure statutory compliance.
Minimally, a good virtual patent marking website will list the patents that exist, the products/services to which they pertain, and provide a statement of some kind that states the page is intended to serve as notice under 35 U.S.C.§ 287(a). The URL should show up in a conspicuous location on a website, for example, https://www.companyname.com/patents/ The body of the page should then specify:
[Product/Services] [Patent No.] [Country]
©2020 Buche & Associates, P.C. This article is written by Mike Jones, J.D. candidate, with input by John Buche, J.D.