Under the patent marking statute, 35 U.S.C. § 287(a), notice can be actual, or constructive notice. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice can be achieved by affixing a product with the word “patent” or abbreviation “pat.” along with the patent number. There are potentially significant consequences for not marking products. If a patented product is not marked with the patent number, damages for infringement will be limited to the time period after the patentee gives actual notice to an alleged infringer.
To recover damages under the marking statute, the patentee’s marking must be “substantially consistent and continuous.” Generally speaking, a patentee fails to meet this standard if it doesn’t mark some of the manufactured articles covered by the patent or stops marking such articles altogether for some period of time. There are penalties for false marking so patentees who utilize marking must be careful to properly identify the patent numbers marked on their products.
Since the enactment of the America Invents Act in 2011, patentees have been able to “virtually” mark products instead of having to substantially, consistently and physically mark products with the number of each patent the patentee holds that covers the product or its various components. The goal of providing this means of marking was to use the wide spread reach of the Internet to inform the public which patents attach to what product, at the same time as providing the benefit of minimal time and expense for patentees to create and update to keep current their product marking.
As required by the statute, the USPTO published a report in 2014 of the effect of this new procedure, finding that it had probably met its goals of reducing manufacturing costs and facilitating public notice, but also revealing that it was seriously underutilized. Even now, 5 years after enactment, the procedure has not been adopted as widely as expected, for reasons that are not clear, but generally proposed to be lack of knowledge of the availability of virtual marking, lack of interest, or uncertainty of how to comply based on the lack of guidelines or case law.
Marking Under the AIA
The AIA provides for virtual patent marking rather than physically. Instead of printing the actual patent number on the product, patentees can display the term ‘‘patent’’ or ‘‘pat.’’ along with an accompanying URL address of a Web site where the actual patent number is located. As there is no USPTO or case law guidance for what information must be presented for proper virtual marking notice, patentees have been looking to existing marketing law. Best practices can be boiled down to listing:
– text ‘The following US Patents apply to this product “
-the branded product name (as sold)
-model #, UPC code
– a specific list of U.S. Patent numbers for each listed product
Some of the uncertainty resulting from lack of USPTO or case law guidance for virtual marking can be countered by reviewing what other companies are coming up with on their virtual patent marking lists. Obviously there are many different technical solutions that can work, some common ones are a link to a database search such as PatentStatus, individual PDF listings via landing page, single landing page list, or a URL that auto forwards to a PDF listing. Although various formats are found common themes are apparent from a review of the samples from the short list that follows. :
- Nanoleaf http://nanoleaf.me/patents/
- Christi Digital https://www.christiedigital.com/SupportDocs/Anonymous/Christie-Virtual-Patent-Marking.pdf
- Valencell https://www.christiedigital.com/SupportDocs/Anonymous/Christie-Virtual-Patent-Marking.pdf
- PDF3D http://www.pdf3d.com/2016/
- Cirba www.cirba.com/company/Virtual-Patent-Marking.htm
- Arthrex www.arthrex.com/corporate/virtual-patent-marking
- Symantec https://www.symantec.com/about/legal/repository
- Tivo https://www.tivo.com/legal/patents
- Kimberly-Clark http://www.kimberly-clark.com/ourcompany/innovations/patents.aspx
- Cosco http://patent.coscoproducts.com/Public
In addition to company run and managed virtual marking sites such as those referenced above, there are also commercial patent virtual marking subscription services. A patent holder’s decision of whether to create and operate such a site in house, or to subscribe to a service will be based on the size of the patent portfolio, the IT know how or resources available to the patentee, resources available for maintaining the system, in view of the outside services available and cost.
At a minimum subscription services should probably include a high number of patent numbers and/or patent application numbers per registered article, automatic patent term calculation, patent expiration and abandonment alerts, and product/patent disassociation when a patent expires or an application is abandoned.
Adoption of the virtual patent marking procedures has been slower than expected, especially in contrast to the acceleration usually associated with internet based systems. The increasing number of company virtual marking web sites, and the existence of commercial subscription services appear to be signs that virtual marking is becoming more widely known and appreciated.