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Virtual Patent Marking

Posted on Dec 8, 2015 in Articles

Patent owners who do not provide constructive notice to potential infringers by marking their products are prevented from recovering any damages for any infringements occurring prior to serving an actual, specific, notice of infringement, or bringing suit. Accordingly, patent owners who wish to realize the full potential of infringement damages through a lawsuit should mark their products with applicable patent numbers.  The America Invents Act (AIA) has made it easier for patent owners to provide such notice.  The AIA has added the option of allowing patent owners to fix an Internet address that associates the patented article with the patent number as opposed to physical patent number marking.  For example, This option of “virtual marking,” has made it easier for Patent Owners to update their products without having to re-label or re-produce a line of products when, for example, a new patent issues that covers the products. (See 35 U.S.C. § 287(a)).

If a family of products is covered by one or more patents, the mark can say “covered by one or more of Patents” followed by a list of applicable patent numbers or the web address where they can be found.  Not every patent listed must cover every member of the product family.

Physical marking of patented articles must be substantially consistent and continuous for the notice provisions to attach.  This means that “substantially all” of the patented articles must be marked. A patent owner who is licensing the patent must make reasonable efforts to ensure that a licensee is following a marking program, such as by notifying the licensee that marking is required or by including a requirement to mark in the license agreement. The mark must be legible and unconcealed. If the product is subject to wear, placement of the mark can be less visible if such placement will lessen likelihood that the mark will be worn away. See American Med. Sys. Inc. v. Medical Eng’g Corp., 6 F.3d 1523, 28 U.S.P.Q.2d 1321 (Fed. Cir. 1993).

If marking a product is not feasible due to size constraints, a corresponding package or label may be marked instead. However, if words are printed on the product itself, the patent number or web address should be included on the product as well.

In addition, the AIA has removed almost all of the prior dangers of mismarking products with patent numbers. (35 U.S.C. § 292 (c)). Now, only the United States may sue for penalty, although a person who has suffered competitive injury may still sue for damages. Marking with the number of an expired patent number is no longer a violation. (35 U.S.C. § 292(a)). With respect to private litigants, the AIA further amended Section 292 to require proof of “competitive injury” and limits recovery to “damages adequate to compensate for injury.” (35 U.S.C. § 292(b)). The law expressly states that it applies retroactively.

The significant potential advantages to patent owners for recovery of infringement damages by marking products remain. The AIA has given patent owners the option to virtually mark their products, while removing almost all of the prior dangers of mismarking products with patent numbers. Accordingly, appropriate marking of patented products is recommended.


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