Patent Marking

 

From a purely selfish motive, products, packaging, websites, marketing material, and almost anywhere else should be marked to indicate a patent pending or an issued patent. It is good advertising and it can help you in the long run. 

If you have a single issued patent and all your products identified by the "claims" in the patent are marked with "United States Patent Number 1,234,567" (or the shorter, "U.S. Pat. # 1,234,567") directly on them, then you are properly marking your products. This handout will help you with some of the tricky issues:

• Pending applications.
• Not marking at all. 
• Marking only some products. 
• Alternative types of marking (e.g. on the packaging). 
• Patents on methods.
• Marking unpatented products as being patented or as "patent pending."

Question: What is the controlling law on patent marking?
Answer: Patent marking is controlled by 35 U.S.C. 287: "Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.," together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat,’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice." 

Question: What about "virtual marking"?
Answer: The current version of 35 U.S.C. 287 allows "virtual marking" in which the product is marked with "Patent" or "Pat." and an accessible (public and free-to-access) web address.

Examples:

• Patent company.com/patents.
• Patent company.com/IP.
• Pat. www.company.com/patents.
• Pat. www.company.com/IP.
• This product is covered by one or more U.S. Patents or Patent Applications as set forth at www.company.com/patents.
• This product is covered by one or more U.S. Patents or Patent Applications as set forth at www.company.com/IP.

 The web site should list products with associated patents. In other words, each listed product should have one or more patent numbers that identify patents that have at least one claim directed to that product. The following is a simplified example of how this may be done:

Product	Patent Nos.
Great Product Model I	U.S. Patent Nos. 9,876,543, 9,876,542, and 9,876,541
Great Product Model II	U.S. Patent Nos. 9,876,540
Great Product Model III	U.S. Patent Nos. 9,876,543, 9,876,542, 9,876,541, and 9,876,540

 

Additional real life examples can be found here, here, and here. The web page should be kept up to date and, as a prudent measure, you should keep records of changes to the patent list to corroborate the constructive notice date for a particular product and patent. It will be up to you to prove that you complied with the marking requirements.  One obvious advantage to virtual marking is that, as patents issue that cover the product, the marking on the product does not have to change. As this rule is new, however, the conservative approach is to continue marking using the old format AND the new virtual marking. Questions pertaining to marking for provisional applications (patent pending) and foreign applications/patents make this a prudent choice.

Question: "U.S. Patent No. 1,234,567" or "patent pending" - what is the difference?
Answer: "U.S. Patent No. 1,234,567" is the marking that refers to an issued patent. "Patent pending" is the marking that refers to a filed patent application (not yet issued).

Question: What is the proper (traditional) format of a marking?
Answer: If only one issued patent applies to the product, you should use "U.S. Patent No. 1,234,567" or "U.S. Pat. #1,234,567." If more than one patent applies to the product, then each applicable patent number should be listed (e.g. "U.S. Patent Nos. 1,234,567 and 2,345,678). The "patent pending" marking may be used for an application that is still going through the system (pending). If both a patent and a patent application (maybe a continuation) applies to the product, then both markings can be used (e.g. "U.S. Patent No. 1,234,567 and patent pending). The marking must be legible.

Question: Is there a requirement to mark "patent pending"?
Answer: Although the statute does not apply until a patent application has "issued," use of phrases such as "patent pending," if accurate, alerts the public to the potential for patent protection. This may help you establish the date of effective notice as being on or near the actual date of issuance, regardless of whether the mark itself is promptly updated.

Question: What is the purpose of patent marking?
Answer: According to the United States Court of Appeals for the Federal Circuit, the marking statute serves three related purposes: 1) helping to avoid innocent infringement; 2) encouraging patentees to give notice to the public that the article or product is patented; and 3) aiding the public to identify whether an article or product is patented.  

Question: Why is patent marking important to the patentee?
Answer: In addition to being a form of marketing, proper patent marking provides "constructive" notice to a potential infringer. If a product is properly marked beginning when the patent issues, then constructive notice is provided to the potential infringer and the patentee will able to recover full patent damages sustained after the patent issued. A patentee who discovers that he has failed to properly mark his covered product can partially cure of his failure by, going forward, properly marking his product. In such a case, although the patentee may not be able to assert damages prior to marking, the patentee will be able to assert damages beginning on the date that marking began. Failure to properly mark relieves the infringer of liability until he has been properly notified actually (e.g. sending written notice to or filing a law suit against the infringer) or constructively (e.g. starting to mark the product). The infringer is only liable for his infringement occurring after the actual or constructive notice. This is true even if the infringer had actual knowledge of the patent and/or his infringement of the patent prior to the actual or constructive notice. Finally, proper marking will allow a patentee to recover damages for infringement that occurred up to six years prior to the filing of a legal action (but without proper marking the patentee is barred from collecting those prior damages). 

Question: When should the patent marking be placed on the patented product?
Answer: Ideally, all products that are provided to the public after the patent has issued should be properly marked. Technically, if unmarked products are being shipped after the patent issues, there is no compliance under the statute. As a practical matter, in most cases the United States Patent and Trademark Office provides at least a few days (and sometimes a few weeks) of advance notice that a patent will issue. At that time, the patentee can take steps to mark or label unmarked products so that, when the patent issues, the products shipped can be properly marked. As mentioned above, a patentee who discovers that he has failed to mark his covered product can, going forward, properly mark his product so that he will be able to assert damages beginning on the date that marking began. 

Question: Where should the patent marking be placed?
Answer: Technically the patentee may mark the product itself or affix a label to the product itself. If a component of a product is patented, it may be necessary to mark both the patented component as well as the product itself (particularly if the marking on the component is not visible after assembly of the product). Depending on the product, etching, molding, printing, or adhering labels adhered to the product are generally accepted methods to mark a product. Under some circumstances the product packaging or a label attached to the product packaging may have the patent marking thereon. Ideally, the "packaging" should be the actual packaging that contains the product. Ideally, every single product that is released to the public should be marked, although there may be some leeway for a small percentage (e.g. less than 5%) of unmarked products if the marking is still considered "substantially consistent and continuous." 

Question: Under what circumstances may the packaging be marked rather than the product itself?
Answer: If both the product and the packaging could be marked, courts vary on whether it is sufficient to mark only the packaging. Some courts apply a strict rule that if it is possible to mark the product, then it must be marked. Some courts apply a more relaxed standard that allows the packaging to be marked if there is a sufficient reason why it was impractical or undesirable to mark the product. Size and "reasons that go to the very purpose of the statute" (e.g. marking the product itself would not provide sufficient notice to the public) may be reasons that it will be found permissible to mark the packaging. The expense of marking seems to be considered by some courts, but not others. Industry standards and the fact that the marking would not be visible after installation may not be sufficient reasons to mark the package rather than the product itself. If there is other writing on the patented product, then the patent marking must appear on the product itself. 

Question: What do you mark if your patent has claims only to methods?
Answer: When the patent involves claims directed to a method (e.g. a method of doing business or a method of manufacturing a product) or is directed to a large or complex system, because of the nature of these types of patents, there may not be a tangible product to mark. Technically, in most of these cases, the patent owner does not need to provide any patent marking in order to recover damages for the full period of infringement. Proper patent marking is required, however, for methods and systems distributed over the internet. Websites for patented methods and systems (and/or software that embodies patented methods and systems) should have a conspicuous patent marking at the "point of entry." It should be clear that the patent marking covers the particular system or method. A hyperlink to the patent marking is not sufficient. Use the standard format.

Question: Whose responsibility is it to ensure that the patent marking is proper?
Answer: It is the patentee’s responsibility to ensure that the patent marking is proper. When there is a failure to mark some of the products, the courts may look to whether the patentee made reasonable efforts to ensure compliance with the patent marking statute.

Question: Do parts of the patented system need to be marked?
Answer: If a patent’s claims are related to a combination of components, some courts have concluded that the patent marking statute appears to be satisfied by marking either the individual components or the entire combination. If a patentee is selling a key component of its patented product and the component has no substantial use except as a part of the patented product, the patentee must either mark that component with the patent number (or the phrase "for use under U.S. Patent No. 1,234,567") or require its customers to mark the completed product. In other words, if a machine that includes a specialty widget is patented, and the patentee is selling replacement specialty widgets, the specialty widgets should have a patent marking on them.

Question: What about using patent markings in marketing materials, literature associated with the product, or on a website?
Answer: A patentee who pays for a patent should definitely take advantage of it by advertising it. However, marking literature associated with the product (but not part of the product or the packaging) is probably not sufficient to satisfy the marking provisions of the statute. The patentee should not rely on listings of patents in associated literature, marketing, or on a website to satisfy the patent marking requirements.

Question: Are there any exceptions to the marking requirement?
Answer: Yes. If the patentee does not practice (i.e. make, use or sell) their own patents (and they do not have licensees or other parties practicing on their behalf), then there is no marking requirement. If the patents only have method or process claims, then there is no marking requirement. If a patent has both method (or process) and apparatus claims, marking is required if both types of claims would be infringed or only the apparatus claims would be infringed, but marking is not required if only the method (or process) claims would be infringed. But for internet-based methods or systems there appears to be an exception to this exception.

Question: What about "false marking"?
Answer: False marking occurs when products are marked as "patent pending" or "patented" and this is not a true statement. Sometimes markings that seem fine are not. For example, a patentee should discontinue using a patent marking when a patent has been abandoned or has expired. Another example is that the product should be evaluated carefully to verify that all the claim elements of at least one independent claim in the relevant patent (or application) are met by the product that is being marked. This evaluation should be performed each time the claims are amended and/or each time the product is changed. Some courts consider each mis-marked product a separate offence – and with damages of up to $500 per offence, this can be very significant. There might be a defense to a charge false marking if the false marking was done without "intent to deceive the public." Under the AIA legislation, only the United States or someone with a competitive injury can sue a patentee for false marking. This will make it significantly less likely that false marking will be enforced.