Introduction

Our clients often ask us about the meaning and need for marking their products with their patent numbers.  The answer is simple (although implementation may sometimes be complicated):  Under U.S. law, patent infringers are liable to pay damages only from the date on which they received notice of the patent that their product infringes.  The law provides, however, for something called “constructive notice”:  If you have marked your product in the proper way to indicate that it is covered by one or more patents, and your product is sold in the U.S., a competing manufacturer or distributor with be considered to have received notice by virtue of your product marking, without your having to give any actual notice of infringement.  As a result, the competitor can be liable for retroactive damages, regardless of the date on which the competitor actually became aware of your patents. 

For this reason, we strongly recommend to our clients that they mark the appropriate patent information on their products.  This article will explain how.

Legal Background

The America Invents Act (AIA) of 2011 was designed to improve patent quality and limit unnecessary patent litigation costs.  One approach toward limiting patent litigation costs involved amending the Marking Statute 35 USC § 287.  The amendments encourage patent applicants and patentees to mark their products covered by their patent applications and/or patents.  This way, the public is provided with  notice, known as “constructive notice”, that a product is subject to a pending patent application or is patented.  Proper marking  allows a patentee to seek maximum damages for patent infringement.

The purpose of the marking statute is for the patent applicant or patentee to provide others, including infringers, with notice of pending patents (patent applications) and/or issued patents.  Patent applicants and patentees who have properly marked the covered product have provided “notice” of their patent application and/or patent(s), and may seek maximum damages for infringement of the patent, based on the date of marking, i.e., the notice date.  Damages may accrue from the date that the patent application/issued patent was properly marked.

Products covered by patent applications and patents in apparatus, system, article, and composition claims, must be marked, to provide proper “notice”.  However, patents and patent applications with only method claims need not be marked, as there is no way to mark a process or method.  For example, courts have indicated that “[w]hen a patent is directed to a process or method, there is nothing to mark.”

Mark as Many Products as Possible

As many products as possible, or substantially all of the products which are produced and covered by the patent application or patent, while in force, should be marked.  “Token” makings of a few or small number of products will probably not constitute sufficient “notice”.

Marking Extends to Any Portion of a Product Covered by a Patent Application or Patent

While patent applications and patents typically cover an entire product, should only a portion of the product be covered by a patent or patent application, the product requires marking.

Marking May Be Actual or Virtual

Marking may be actual, on the product itself of its packaging, or virtual, via a reference to a web site or other address on the world wide web.

Actual Marking

Actual marking requires that the marking (marking language) should be physical, conspicuous and easily locatable and readable on the product, product packaging, or the associated label attached to the product or package.  Marking should reflect the actual status of the patent application as “Patent Pending” (until the patent from the application is granted and issued with a Patent Number), or “Patent”, if the patent has issued.  However, marking on product literature, such as information sheets, brochures, user manuals, marked with the application or patent number actually or virtually, is not considered to be “part of the product packaging”, and is not considered “marked”, and even if packaged with the product, such marking remains an open question. 

Examples of “Actual Marking” include:

“Patent 10,111,222”, “Pat. 10,111,222”, “Patent Pending”, “Patents Pending”

For multiple patents, issued and pending, example language includes:

Covered by one or more of the following US Patent Nos. 9,876,543, 9,123,456, Other Patents Pending

Virtual Marking

Internet technology growth has given rise to virtual marking.  Virtual marking allows patent applicants and patentees to dynamically update patent information without making expensive modifications to the product manufacturing process, such as retooling molds and dies each time patent status changes.  Also, the patent applicant/patentee is easily able to update a web site in real time, to provide a complete and up to date list of patent applications and patents which cover the product.

Virtual marking requires a web site address that must be accessible to the public without requiring a fee or payment.  The website should be accessible directly, not through any click through, or other indirect arrangements.  Similar to actual marking, the web site address should be conspicuous and easily locatable and readable on the product, product packaging, or the associated label attached to the product or package.   

Example virtual language should be marked on the product or its packaging as: 

Patents:  www.companyname.com/patents. 

This address should result in the immediate and direct display of a list of patents and patent applications covering the product.

The Applicant, if the application is pending, or the Patentee, who holds the issued patent (from what was previously a patent application), has responsibility to maintain the web site and update it according to patents for the product being issued or having expired. The patentee (or patent applicant) may employ a service for maintaining the virtual marking, but the ultimate responsibility for the accuracy of the marking rests with the patentee (or applicant).

Marking Software

Software marking depends on the form of the software.  Software on a storage medium, such as a CD, DVD or Portable Storage should be marked thereon, or the associated packaging or labels should be marked.  Software downloadable from a web site or a web page may be marked on the web site or web page, For example, “a patentee must mark a website either where the website is somehow intrinsic to the patented device, or the customer downloads patented software from the website”.  Other suggestions for software patent marking include,  for example, on the home page, the “About” page, the help pages, and the splash screen.

Marking Extends to Licensees

It is a patentee’s duty to inform and ensure that licensees mark the patent pending or patented product.

Further questions?  Contact jerome@kligler.com.