In order to ensure maximum compensation for any infringements on your patents, your products should include a clear patent marking to show that they are protected. Let’s dive-in:
Patent marking provides constructive notice to the public of your patent. Constructive notice is given to the public of your patent by affixing the patent number on the patented product. By doing so, alleged infringers are liable for patent infringement as soon as possible even if they don’t have actual knowledge of your patent. This article focuses on the patent marking requirements for the United States.
Each type of intellectual property, such as patents, copyrights and trademarks, has its own specific requirement for marking. For copyrights, the Copyright Office publishes a Copyright Notice Circular 3, which explains the requirements for copyrights in regards to marking. For trademarks, the marking requirement is explained within the Trademark Manual of Examining Procedure Section 906.
How do I comply with the patent marking statute?
The patent marking statute explains how to comply so that you are entitled to the benefit of the patent marking statute.
The patent marking statute provides you with two different methods to comply with the law. The first method I refer to as the “traditional patent marking.” This patent marking method requires that the product or its packaging clearly identify the patent(s), which cover the product. The second method I refer to as “virtual patent marking.” This method was created and enacted in 2013 with the America Invents Act. Virtual patent marking requires that the product or its packaging clearly identifies a web address that would allow a person to find the patent(s) that cover that specific product.
I generally recommend virtual patent marking over the more traditional method of patent marking because of its advantages, which I have listed below. If you do not have a website, or your product will only be covered by one patent, you might then consider using the traditional patent marking method.
Here are the necessary steps to comply with the patent marking statute. Always double-check this information with your patent attorney since laws can change, and courts might construe the patent marking statute differently in the future.
Step 1: Decide between a traditional patent marking or a virtual patent marking.
The traditional patent marking method places all of the patent number(s) directly on the product or, when that is not feasible, on its packaging or label. The problem with the traditional marking method is that the patent portfolios may grow, and patents expire over time. The product, packaging or label will need to be updated continually each time a patent is added or removed. Oftentimes, this was quite burdensome because it affects the manufacturing and assembly process for your product. If your product is covered by only one patent, it might be easier to use this traditional patent marking method since there would be no need to change the patent marking in the future..
In contrast, virtual patent marking is a hybrid system because the product is marked with an internet webpage, which displays the associated patent number(s). For example, the product itself can be marked with “Pat.: www.[domainname.com]/patents.” If the product cannot be marked with the internet webpage, then its packaging or label would include a reference to the internet webpage. The patent information placed on the product, packaging or label will remain the same regardless of what happens to the patent portfolio in the future. The patent information marked on the product would lead a person to a patent webpage that would contain the up-to-date status of the patent number(s) associated with the patented product.
The obvious benefit of virtual patent marking is that the manufacturing and assembly processes for your product never have to change when your product goes from being patent pending to patented, when your patent expires, or when more patents that cover your product are added in the future. The only thing that needs to change is the content on the patent webpage so that it includes the updated patent information. You do not need to change your product or its packaging in response to changes in the patent portfolio.
For this reason, I generally recommend virtual patent marking rather than the more traditional method of patent marking unless you do not have a website, or you will only have one patent for your product.
Step 2: For traditional patent marking, follow the format as defined in the statute.
For traditional patent marking, the patent number is placed on the product, packaging or label. See patent marking examples below.
|Product||Patent marking example|
The law dictates the exact words that you need to use to comply with the statute. You must use the term “Patent” or “Pat.” followed by the specific patent number. Remember that for design patents, the letter D must be included with the number. Here are some patent marking examples.
|For Utility Patents||For Design Patents|
|Patent: 7,654,321||Patent: US D654,321|
|Pat.: 7,654,321||Pat.: US D654,321|
Some companies prefer the verbiage “This product is covered by U.S. Patent No(s). [insert patent number(s)] and other pending applications and foreign patents.” However, the statute does not require that you use this verbiage.
Step 3: For virtual patent marking, follow the guidelines as defined in the statute.
For virtual patent marking, the statute also states that the product must have the words “Patent” or “Pat.” followed by the internet webpage (not the patent number(s)) where a person can look up and find which patent(s) cover the product.
The patent marking statute requires you to put the webpage address on the product. You can put the patent webpage address on the packaging or label when it is no feasible to put it on the actual product itself. For this reason, I recommend that you make the internet address as short as possible.
The product, packaging or label needs to be clearly marked using the following format:
Patent or Pat. with the internet address such as:
The patent webpage needs to accessible to the public without requiring a fee or payment, and it cannot be placed behind a click-through agreement. For example, e-cigarette sites might require the user to identify themselves as being over 18. The patent webpage needs to be accessible without having to click through this type of warning or limitation.
On the internet webpage, the statute states that you must associate the patented article with the patent number. Put simply, the internet user must be able to make the association between the product and the patent number(s) easily. Don’t be creative; just get straight to the point. This is an instance where you need to be straightforward and as transparent as possible. You are trying to satisfy a statutory requirement, not optimize the patent webpage for search engines.
The statute has not been litigated at this point, so there is no magic format that the courts have sanctioned to define for us how to effectively associate the patent number and the patented article.
I recommend that you make the patented article easy to locate on your webpage. Anyone who is holding your product should be able to look at the product and find the patented article on the webpage quickly and without any significant effort. You can use a picture, product identification number, product number or any other method as long as the internet user can locate the patented article on the patent webpage for the product. You can use one or more product identifiers to help the internet user associate the product and the patent number(s) if that would help.
Next, the internet user should also be able to find the associated patent number(s) once they locate the product on your webpage.
The following is a sample virtual patent marking example for a patent webpage that might live on your website or a patent marking website.
|Product Number||Patent number(s)|
|SKU: XYZA||Pat.: 123451|
|SKU: XYZB||Pat.: 123452|
|SKU: XYZC||Pat.: 123453|
|SKU: XYZD||Pat.: 123454|
Patent webpage examples for virtual patent marking
These URLs are quite long, and it would be difficult to place such a long URL on a small product. It would also be aesthetically displeasing for the potential customer. A solution would be to register the shortest domain possible and have that domain forward internet users directly to your patent webpage on your website. It is also possible to have the shortest domain possible direct internet users to a webpage that is hosted by a virtual patent marking online service.
Step 4: Congratulations! You have now provided virtual constructive notice of your patent to the world.
By complying with the patent marking statute, the patent holder is automatically providing constructive notice of the patent to the public. The product, packaging or label now leaves a trail from the product to the patent via the webpage.
What are the advantages of complying with the patent marking statute?
Patent marking refers to a law that allows you, the patent owner, to collect damages from an alleged infringer even if they did not possess actual knowledge of your patent. When you comply with the patent marking statute, the law states that you have given the world constructive notice of the existence of your patent. Therefore, the alleged infringer should have known about your patent and are liable to you for damages even when you cannot prove that they actually knew about your patent. The alleged infringer is responsible for conducting thorough research to avoid infringing on other people’s patents.
Put simply, the benefit of compliance of the patent marking statute is that it allows the patent holder to impose patent infringement liability on the alleged infringer as early as possible and to maximize potential damage awards even if the infringer does not actually know about your patent.
If you are reading this, you probably were awarded a patent recently. You may also be interested in maintenance fees, policing the market for infringement on Amazon and eBay, licensing, etc.
What is the Patent Marking Statute and how it encourages compliance
35 U.S.C. § 287(a) states:
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. (emphasis added).
The last part of the patent marking statute explains the consequences if there is a failure to mark a product correctly with the patent number. Such failure to mark will mean that you have failed to give the public constructive notice of your patent. This means that you also give up your right to collect damages unless evidence is shown that the alleged infringer was notified (i.e., actual notice; e.g., cease and desist letter) of the infringement. The law presupposes that the alleged infringer could not have found out about your patent because your product would not have provided any indication that your product was patented. Hence, even if the alleged infringer did not look for your patent(s) on your products, they are not liable for patent infringement until they have actual knowledge of your patent. In this way, the law encourages compliance with the patent marking statute by causing you to forfeit your ability to collect damages if you fail to comply.
Implied Benefits of Patent Marking for the patent holder and competitors
Marking your product with the proper patent number to comply with the patent marking statute is beneficial in two important ways for the patent owner and two significant ways for competitors.
Two benefits to the patent owner
For the patent owner, the first benefit is that, as discussed above, it gives you, the patent owner, the right to seek damages or redress for the infringement as early as possible. Liability for patent infringement can occur as soon as your patent application matures into a patent, which is referred to as the issue date of the patent. This date is located at the upper right-hand corner of your issued patent.
The patent marking statute allows you to give constructive notice to the public, including any alleged infringers, about the existence of your patent. This is similar to a recordation of a transfer of ownership on a house, which gives the public constructive notice of that transaction. Even if the public is not actually aware of it, they are legally responsible for knowing about the transaction so that they do not infringe on the new owners’ rights. The same is true with the patent marking statute. Even if the alleged infringer did not actually know about the issued patent, they are responsible for researching that information.
Constructive notice is based on the legal principal that:
Ignorantia juris non excusat or Ignorance of the law excuses not
If someone could avoid liability for their actions by merely claiming ignorance, everyone would do exactly that.
The second benefit for the patent owner is that it eliminates the potential for a declaratory judgement action against you. This protects you from getting dragged into litigation. If you had to give actual notice, such as a cease and desist letter, to every alleged infringer to impose liability of patent infringement, that notice might then be interpreted as a threat of litigation. The law allows those who are being threatened with litigation (i.e., alleged infringer), the option to be the first to go to court and ask the court to decide the rights and responsibilities between the parties.
By providing constructive notice of the patent instead of an actual notice of infringement, you are not threatening any one with infringement or a lawsuit. You are passively notifying the world of your patent.
Two benefits to competitors
For competitors, the first benefit is that it helps them to mitigate potential patent infringement liability. It isn’t a perfect system, but it works. Patent marking gives competitors a way to find information as to what patents might be out there so that they can avoid infringement. If you find a patent number on a product similar to your product, you may need to investigate to determine if your product will be potentially infringing on that patent.
One of the recommendations that I provide to new inventors who want to secure a patent on their product is to look for other products that serve a similar purpose. If they find a similar product, I tell them to look for patent markings on those products. This is a way to learn about the patents of their competitors and issues that they might need to deal with if they want to launch their own competitive product.
Side Note: Another way to find patents associated with a product is to conduct a simple Google search. Just type in PATENT and [PRODUCT NAME] in the google search engine. If nothing is found, you might then consider purchasing the product to inspect the labels and product packaging and literature for any patent marking.
The second benefit to competitors is that it gives them a sneak peak into how broadly the patent owner is construing their patent claims especially when the patent claims do not necessarily match up closely to the product. This information is only an indication because in my opinion, anecdotally, most patent owners take a liberal approach to the breadth of the claims of their patents. Nevertheless, it may provide valuable information.
Frequently Asked Question for patent marking
Why do I recommend virtual patent marking over traditional patent marking?
Put simply, virtual patent marking does not interrupt the manufacturing and assembly process in the future because the patent webpage that is printed or placed on the product, packaging or label does not need to change over time. When more patents are acquired that cover the product, no change to the product, packaging or label is necessary. Only the patent webpage content will change to reflect the newly acquired patent(s).
What happens when a patent expires? You should remove the patent number on the patent webpage. To do this under a traditional patent marking method, you might have to make new molds. For example, a few years back, Solo Cups used the same injection molds for their lids for a period of time longer than the life of their patent. They were sued for false patent marking. They did not remove the patent number from their lids after the patent expired because the patent numbers were a part of the mold, and removing the numbers would have meant making new molds. They decided that they did not want to incur that expense, but they ended up having to possibly face legal fees to deal with the false patent marking lawsuit instead.
With virtual patent marking, no new molds would have been necessary. You can just change the information on the patent webpage when the associated patent expires.
Side Note: Virtual patent marking was recently enacted, and there has been little litigation to provide detailed guidance as to what would be considered sufficient or insufficient association between the patented article and the patent number.
Do you need to have a record of when the patent number and patented product was first associated on the patent webpage? Do you need to keep record on a daily, weekly, monthly or yearly basis to show that the association was always there and available to the public?
I would say yes to both questions as a precaution. The reason is that it might be unfair to the public or your competitor to leave the patent webpage blank and only associate the patent number and the patented product right before litigation. Similarly, it would be unfair to put up the patent webpage but take it down until such point as litigation occurs. These would not serve the overall goal of constructive notice to the public. On the other hand, the statute provides for no requirement to keep records regarding your patent webpage. I suggest doing so for your own protection in the case of future litigation.
These are potential areas where one might legally accuse the patent owner of not complying with the patent marking statute by not providing sufficient constructive notice.
I would take a conservative approach and, to the extent that is reasonable, take regular snapshots of the patent webpage and keep those in your records. You could have your web developer take pdfs of the webpage and save it to the website hosting server on a regular basis. Similarly, you could have the image emailed to someone for safe storage and retrieval later on during litigation if necessary.
What are virtual patent marking online services?
Online companies exist that will maintain your patent webpage. Supposedly, they will also help you to comply with the patent marking statute. I have not researched them and have never used any of them. You can find several by typing “virtual patent marking online services” into www.google.com. Here are a few examples, but please be aware that these are not endorsements.
Do I really need to comply with the patent marking statute?
No. However, if you do not comply, you forfeit the benefits of the statute. The alleged infringer is no longer liable for any damages to you until the alleged infringer is provided actual notice of your patent.
Additionally, you risk the possibility of being dragged into court by the alleged infringer through a declaratory judgement action when you do provide actual notice of the infringement via a cease and desist letter.
Patented method claims are an exception to the patent marking requirement. For patented methods, you can accrue damages prior to actual notice to the alleged infringer even without any patent marking. In many cases, patented method do not need to be marked with the patent number. A part of the inherent problem of marking a method as patented is that there is no way to mark a step or action with a patent number.
However, that is not true all of the time. In prior cases, an alleged infringer was not liable for damages that the patent holder incurred before actual notice was provided when the patent being asserted had both method claims and apparatus claims. See the discussion regarding American Medical Systems below for more information about this situation.
Does notifying people through my website or advertisements work to provide the right type of notice so that alleged infringers are liable for infringement?
Many inventors go out of their way to let others know about their patent through forum discussions, brochures, webpages, technology pages, patent listings, etc. However, these ways are not sanctioned methods of notifying the public in general about your patent. It may actual notice of the patent to those people that they directly communicate with. But, it does not provide the required constructive notice that is required legally so that alleged infringers would be held liable for damages even if they do not know about your patent.
Placing patent numbers on advertisements and websites is okay for marketing purposes. However, you must satisfy the statutory requirements to receive the benefit of constructive notice and patent damages before actual notice discussed above.
How do I mark patented method claims?
In general, the patent marking statute does not apply to patented methods because you cannot mark a series of steps. Hence, patent infringement liability for performing the steps of the patented method start from the issued date of the patent.
However, the purpose of the patent marking statute is to give constructive notice where possible. The Federal Circuit has stated that “Where the patent has both a product claim and a method claim, if it is possible to mark the product itself with the patent number, then you must do so to give constructive notice to the public” American Medical Systems, Inc. v. Medical Engineering Corp. (Fed. Cir. 1993).
If you have a unique device that is used in conjunction with a patented method, I recommend that you consider marking the unique device with the patent number(s).
Which patents do I need to associate with the patented article?
You should identify all of your patents that cover the patented product.
What is false patent marking, and what are the consequences?
False patent marking occurs when you associate the wrong patent number on a product. 35 USC 292 defines the consequences should you falsely mark your product with a patent pending when it is not or with the wrong patent number that leads others to believe that the product is protected by a patent when it is not.
35 USC 292 contemplates the scenario where the product is falsely marked with a patent number, which does not actually cover the product. This is a qui tam proceeding which means that the government transfers the responsibility of policing the market for false patent marking onto the public and onto those who have suffered a competitive injury. Simply put, in general, if you are a competitor, you may be able to bring an action against an entity that falsely affixed that patent number on their product. You might be able to collect statutory damages, which could be significant.
The statutory damages can be up to $500 for each offense. Not many false patent marking causes of action are ever litigated. As such, this is not a well-developed area of law. However, the potential award for false patent marking by the competitor that brings the action is $500 for every unit. For example, if Solo Cup marked each of their lids with an expired patent, it is possible that the qui tam proceedings could award $500 for each lid falsely marked. Most likely, the court would not attach such a large sum of money to a claim such as this, but one never knows.
How do I mark software with a patent?
There is no satisfactory answer. If the software is provided as a DVD or CD, I would suggest that you mark the DVD or CD itself or the packaging or labels that come with the DVD or CD. If it is a downloadable item, I would recommend that you insert the patent marking in the about page, the help section, and the splash screen. Check with your patent attorney.
How do I hide the patent number?
Sometimes, my clients have expressed a desire to hide the patent numbers from their competitors. They feel that since the patent has the potential to teach others how to make and use the patented invention. Therefore, they would rather keep the patent number as confidential as possible. Yes, competitors can look up the inventor’s name or the company’s name in the USPTO database of patents, but that would require additional effort, and most competitors will not do so.
If you want to keep the patent number as confidential as possible by not complying with the patent marking statute, you will forfeit the benefits of the patent marking. However, you can also consider following through with the patent marking requirements, but you could not index your patent webpage in google and not provide a link to the patent webpage on your sitemap or link to it. Thus, the only way to get to the patent webpage would be to locate the patent webpage URL on your product, packaging or label. You would satisfy the patent marking statute to receive its benefit, but competitors would need to buy your product for them to find your patent webpage. Be aware that virtual patent marking is a new method, and there has been no litigation on its specifics yet. Therefore, it is best to consult with your patent attorney on your strategy so that you can choose to implement a patent marking scheme that works best for you.
How does marking my product patent pending benefit me?
Marking your product patent pending does not provide you with any additional benefits. It is merely a notice to the public that you have filed a patent application with the United States Patent and Trademark Office. A patent-pending does not give you a right to sue others for damages.
If you want a detailed explanation of patent pending, read my article: Patent Pending: Definition, Benefits, Warning
|Manfrotto tripod||Patent pending marking example|
In general, I recommend marking products with patent pending because it does let competitors know that should they choose to proceed, a patent might be issued soon for your product and that they should spend some money to do due diligence and clear their own product that they want to introduce into the marketplace.
Do you have a question that I have not addressed in this blog entry? Please feel free to contact me.