Successful startups pay close attention to intellectual property and, as such, follow generally accepted patent practices. One of those is patent marking, which is pretty self-explanatory: when you patent something, you mark or advertise it as being patented, usually with the specific numbers in the patent itself as issued by the United States Patent and Trademark Office (USPTO).
Is patent marking mandatory? Not at all. Is it legal to mark something as patented if it is not? No, absolutely not, and you can incur a penalty for doing so. Still, the overarching benefit of patent marking is significant insofar as it gives you important leverage if someone tries to infringe upon your patent after actual or constructive notice of your claim is issued, and you need to take them to court to protect your intellectual property.
Notice Requirement and Damages
Generally. Under 35 U.S.C. § 287, a patent owner must give notice to infringers of any existing patents before any damages can be awarded in an infringement suit. This “marking” statute encourages patent owners to mark their products in order to protect the public from innocent infringement of patented products (Nike Inc. v. Wal-Mart Stores Inc., 138 F.3d 1437, 1443 (Fed. Cir. 1998)).
Typically actual notice is achieved by directly notifying the alleged infringer of the patent(s) being infringed using a Cease and Desist Letter or by filing an infringement suit and sending notice thereof. The patent owner may collect damages that accrued after the date on which actual notice occurred, and only if infringement continues after actual notice is given.
Constructive Notice – Marking
Traditionally constructive notice was only achieved by marking patented products with the word “patent” or abbreviation “pat.” along with the patent number. Recent changes in patent law now also permit virtual marking, which occurs when the word “patent” or abbreviation “pat.” is followed by an freely accessible internet address “that associates the patented article with the number of the patent” (35 U.S.C. § 287(a)). For many, virtual marking provides the advantage of easily updating and maintaining patent information on a website instead of having to update the marking of the actual product.
If constructive notice is provided, actual notice is not necessary to collect damages. Since the statute of limitations for infringement suits is 6 years (35 U.S.C. § 286), a patent owner complying with the marking statute may collect damages going back 6 years before the date the suit is filed.
How to Mark. 35 U.S.C. § 287 requires the patented product itself be affixed with the marking, or, alternatively, “when, from the character of the article, this cannot be done,” by affixing the marking to the package in which the patented product is contained. Patent owners should always affix the marking to the product itself whenever possible, as courts have not been very forgiving when it is simply “more convenient” to mark the package instead.
For example, courts have held that “[w]here the patented article has markings or printing on it, other than the appropriate patent marking, then the alternate form of patent marking on the package is not sufficient compliance with [the patent marking statute]” (Rutherford v. Trim-Tex, Inc., 803 F.Supp 158, 1870 (N.D. Ill. 1992)). In other words, if, for example, your brand’s logo or name is on the product, courts may deny damages accrued before the suit was filed by concluding that the product itself should have been marked instead of the product’s package.
Who Must Comply
A patent owner who makes or sells a product must mark that product with all patent numbers covering any aspect of the product.
Further, a patent owner must take “reasonable steps” to ensure that any and all licensees of the patent are marking their products. Courts have concluded that “substantial compliance” with the marking statute can be sufficient. As an example, in one case the court concluded that a patent owner complied with the marking statute when 95% of the products sold by the licensee were marked and where the patent owner notified the licensee’s suppliers of the need to mark (Maxwell v. J. Baker Inc., 39 USPW2d 1001 (Fed. Cir. 1996)). Any patent owner should, to the extent practicable, consistently monitor its licensees’ activities to ensure they are marking their products appropriately.
Patents That Do Not Require Notice
The patent marking statute does not explicitly require patents containing solely method claims to be marked, and courts have held that no notice is required “where there are no products to mark” (Texas Digital System, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)). If the patents being asserted in an infringement suit only have method claims, then the court will not assess whether the patent owner complied with the marking statute, and, therefore, damage assessments will automatically include the six years prior to the suit being filed, regardless of whether notice was given.
Even so, patent owners should be aware that if a tangible item, or portion thereof, is created using a patented method and the asserted patent includes both method and product claims, marking will be required (American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523, 1538-39 (Fed. Cir. 1993)). For example, if software is covered by a patent having a computer program product claim (e.g., recites a disk, physical memory, etc.) and the software is delivered on a physical product, like a disc, then courts will require compliance with the notice requirement.
False marking typically involves marking an product with a patent number or deceptively using the word “patent”, the abbreviation “pat.”, the words “patent pending” or some other similar statement, when a product is not actually covered by a patent or related to a patent application. Anyone who suffers a “competitive injury” may bring a civil action against the false marker in an effort to seek compensation for those injuries.
Although the law previously provided false marking penalties for marking a product with an expired patent, such action is not a violation of the current patent law.
Legally, there is no advantage for using “Patent Pending” (no damages can be awarded for activity occurring before a patent issues) nor any penalty for not using it. Even so, many patent applicants mark their products with “Patent Pending” in order to enhance their product’s appeal or in an attempt to separate themselves from competitors. Use of “Patent Pending” should only be used in relation to patent applications that have been filed.
Interested in learning more about patent marking and other aspects of protecting your intellectual property? Interested in learning more about protecting your intellectual property? Email firstname.lastname@example.org or call (919) 348-2194.