Practice Areas | Patent | Patent Marking Under the America Invents Act
“Patent Marking” refers to the notices “Pat. 7,000,000,” “Pat. Pending,” and the like that appear on products to notify the public and competitors that products are patented. Failure to comply with the patent marking and notice requirements of US law can be a costly oversight for patent owners.
Using “Patent Pending”:
The purpose of the “patent pending” marking is to warn copyists that a patent covering the product may issue. But the patent statute does not provide any advantage to using “Patent Pending” or penalty for not using “Patent Pending.” Using “Patent Pending” does not entitle one to damages prior to issuance of a patent; nor does it provide any basis for objecting to copying.
Complying with the notice requirement of US law:
Under 35 U.S.C. § 287, a patent owner can collect damages for an infringing product only if adequate notice is given of the patent(s) at issue. The patent act provides two ways of providing notice: actual and constructive. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice is achieved by affixing a product with, for example, the word “patent” or abbreviation “pat.” along with the patent number.
Virtual Marking:
The AIA permits a patentee to put the public on constructive notice via “virtual marking.” This “virtual marking” is satisfied by the word “patent” or abbreviation “pat.” on the product followed by an internet address at which the patented article is associated to one or more patent numbers. Virtual marking provides many benefits over traditional patent marking. The most significant advantage is that the patent owner can avoid the expense and effort required to update and maintain patent information on its products. Rather than retooling its manufacturing process or changing product packaging every time a patent issues or expires, the patent owner can simply update its “virtual marking” website.
Mark the product itself, rather than the packaging:
The best practice is to mark the product itself with either the patent number or the “virtual marking” internet address. But the law provides for alternatives if marking the product itself “cannot be done.” Patent owners might satisfy the marking statute by marking the packaging if, for example, the size of the product itself renders marking unfeasible, or if the cost to mark is disproportionate to the cost of the product itself. But patent owners should be cautious not to decide to mark the packaging rather than the product itself just because it may be more convenient. The language of the statute is strict, stating that marking the packaging is acceptable only if marking the product “cannot be done.”
Who must comply with the marking requirement?
A patent owner who makes and/or sells a product covered by a patent must mark that product with all applicable patent numbers. A patent owner must also take “reasonable steps” to ensure that any and all licensees of the patent are marking their covered products.
There is no marking requirement for patents that contain only method claims as there is no physical product that can be marked. But if a patent owner wants to give notice of method patent claims, products may be marked with “Made under US Pat. 7,000,000” or “For Use under US Pat. 7,000,000.” If the patent contains only product claims or has both method and product claims, the product should be marked. Marking is also required for design patents to obtain the full scope of remedies available for infringement.
Software:
Where there is a “tangible item” embodying the software, it must be marked to comply with the marking statute. Simply providing notice at the start-up screen is likely insufficient. Stated simply, if there is a way the product can be marked, it should be marked. If there is a website that embodies the software, or that provides access to a program or downloadable software covered by the patent, the website should be marked. However, if the patent contains only method claims, there is no need to mark.
