US Patent Marking: A Brief Overview and Guide

Executive Summary:

• Patent marking on products in the marketplace maximizes potential damages in infringement lawsuits and deters infringement.

• Failure to mark patented products may limit patent owner to damages for the period after infringer is notified.

• Virtual marking makes it easy to mark products with multiple patents and to implement updates.

• Proper marking under U.S. patent law requires 1) the full or abbreviated word patent followed by the patent number(s) on a patented product or packaging, or 2) a publicly accessible website URL associating the patent(s) with the product.

I. Introduction to U.S. Patent Marking

U.S. patents are for enforcing legal rights to exclude others from making, using, selling, or offering to sell a patented invention. A well-crafted patent should enable, for example, a patent holder to sue to recover money damages for injury resulting from infringement. Importantly, however, the same well-crafted patent could be rendered useless for recovering sufficient damages in U.S. federal courts by mere failure to mark patented products in accordance with U.S. patent law.

Marking in the context of U.S. patent law refers to affixing a notice on patented articles or packaging to inform the public of patent protection. 35 U.S.C. Sec. 287(a). Marking in compliance with this statute effects "constructive" notice to would be infringers, as opposed to "actual" or direct notice, which can occur by way of a cease-and-desist letter, lawsuit, offer for license or other notice letter from a patent holder.

A patent owner cannot recover damages for infringement occurring before the infringer had notice of the infringed patent. Constructive notice offers an efficient and effective way to provide notice and establish a starting point for damages calculations without first identifying potential infringers.

It is not uncommon for a patent owner during litigation to confront a defendant that has been profiting substantially from infringement for some time before the patent owner discovers the infringement and files the lawsuit or sends a letter to the infringer with demands. It may be impossible to recover for infringement activity before actual notice unless the patent owner has used patent marking to provide constructive notice. Avoid this problem, however unlikely, by taking relatively simple steps to mark patented products to provide constructive notice and maximize infringement damages potential and deterrence efficacy.

II. History, Requirements, Benefits and Pitfalls of U.S. Patent Marking

A. History

Patent marking was codified in the U.S. Patent Act of 1952. The America Invents Act of 2011 codified virtual marking.

B. Requirements for Patent Marking to Establish Constructive Notice

Constructive notice of patent protection is provided when a patent holder marks their product in accordance with the marking statute 35 U.S.C. Sec. 287(a). If patent marking is not used for patented products or is not in compliance with the statute, then damages calculations will be limited to a period beginning when actual notice is established by demand letter, lawsuit, or other means.

1. Physical Marking

To comply with the marking statute, a patented product must be marked with the full or abbreviated word "patent" along with the associated patent number or numbers. If marking directly placed on the product would be obscured or infeasible, the marking may be placed on associated packaging.

2. Virtual Marking

Alternatively, virtual marking is permissible to establish constructive notice under U.S. patent law. Virtual marking complies with the statute is a website URL is provided in association with the patented product or packaging. The website URL must lead to page that identifies the word patent along with the associated patent or patents. Failure to maintain and keep the virtual marking website updated can work against establishing constructive notice.

Virtual marking is convenient for accommodating corrections, additions, and updates to product marking. Virtual marking is particularly suitable for small or complex products by avoiding the need for physical space.

The marking statute only applies to physical products. Method and process patent claims do not cover physical products. Infringement damages for method and process patents are recoverable only after actual notice.

C. Benefits of Patent Marking

Marking establishes constructive notice to others that a product is patented, and which patent or patents cover the product. Marking helps maximize potential damages for infringement. Proper marking ensures damages calculations begin as early as possible, such as when the patented product is first sold with marking. Without marking or constructive notice, damages calculations for infringement begin when actual notice is provided.

If a patent holder does not mark patented products, they must rely on actual notice. Actual notice by a letter, licensing offer, lawsuit, or otherwise must identify the accused infringing product or activity and allege infringement. It is not enough to inform the infringer that they may be infringing. Specificity is a requirement to establish actual notice. On the other hand, marking covers all potential infringers without a need to identify one specifically.

D. Pitfalls of Patent Marking and False Marking

In litigation, the patent owner bears the burden of proving compliance with the marking statute to establish constructive notice. Infringers can challenge the marking. Patent holders can take steps to avoid problems withstanding such challenges.

For example, patent holders must mark substantially all patented products to comply with the marking statute. Marking only a small percentage of products can defeat a bid to establish constructive notice.

Also, patent licensees must comply with marking requirements to avoid non-compliance. Patent owners must ensure patent licensees comply accordingly to avoid limiting damages.

Packaging can be marked instead of a patented product if marking the product itself is impractical. The impracticality, however, must be provable.

Inaccurate marking can lead to penalties under the false marking statute. 35 U.S.C. Sec. 292. The false marking statute prohibits false marking with intent to deceive. Offenders can be liable for up to $500 per product sold or per marking instance. The America Invents Act eliminated Qui Tam Actions by which individuals could sue for false marking on behalf of the government and split the penalty. Now, only the government or competitors that can prove competitive injury can take action under the false marking statute.

Intent to deceive can be inferred. For example, neglecting to update marking, remove expired patents, or correct errors can lead to a finding of intent to deceive. Marking should be regularly audited to remove expired patents or correct errors.

III. Marking Strategy

Marking is a low cost means for establishing early constructive notice. Preferably, a combination of notice types, both actual and constructive, is implemented. Patent holders can lay groundwork for a stronger patent litigation strategy by both taking advantage of the marking statute and sending timely and effective cease-and-desist letters. Patent holders should maintain records of when marking began, how products are marked, and virtual marking updates.

Maximize infringement damages potential and patent enforcement value by complying with the marking statute. Avoid false marking to prevent penalties. Develop and maintain consistent marking practices including good record keeping and regular auditing. Rely on actual notice for method and process patents.