Virtual Patent Marking 101

Dan Gjorgiev | October 12, 2016

A patentee can recover damages for patent infringement once an infringer infringes a patent with notice of the patent. [1] The patentee can provide constructive notice to the infringer by marking the patented product either physically or virtually. To mark the patented product virtually, the patentee must physically display the term “patent” or “pat.” on the product along with the URL to a web page accessible by the public at no charge. [2] The web page must associate the patented product with the number of the patent. [3]

Virtual patent marking allows a patentee to update patent information without making expensive modifications to its tooling or manufacturing process and also include additional patent-related information on the same platform. If multiple patent numbers are involved, virtual patent marking reduces the amount of information required to be physically displayed on the product, allowing for smaller products to be marked rather than labeled.

Labeling is required if it is impossible, simply by the nature of the patented product, to place the required information on the patented product. [4] The patentee may instead mark the patented product by fixing to it, or to its packaging, a label that contains the required information. [5] The test for whether the patented product has been sufficiently marked is whether notice to the public has been provided that the product is patented. [6] Courts consider the size of the product, trade customs, expense, and whether the product would be defaced when determining if a label is an appropriate alternative to marking. [7] Thus, patentees should not choose to label the packaging simply because labeling may be more convenient than marking.

Although the patentee’s website must associate the patented product with the number of the patent, there is currently no USPTO or case law guidance that specifies the degree of correlation required, between the patented product and the patent number, to provide a legally sufficient association of the two. [8] However, best practices include: (1) indicating “the following U.S. Patents apply to this product,” (2) listing each patented product by branded product name (as sold) and model number or UPC, and (3) listing all of the patents applying to each product. [9] There are many examples of the various formats companies are using, including the following:

Patentees should ensure, however, that a patent at issue is not difficult to find in a large list of patents and that it is not difficult to associate particular patents with a particular patented product.

A patentee does not fully comply with the marking requirements until the patentee has “consistently marked substantially all of its patented products, and [the patentee is] no longer distributing unmarked products.” [10] Thus, prolonged unavailability of the marking website or infrequent updates to the website precludes a finding of full compliance. [11]

 

[1] 35 U.S.C. § 287(a).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Sessions v. Romadka, 145 U.S. 29, 49-50 (1892).
[7] U.S. Pᴀᴛ. ᴀɴᴅ Tʀᴀᴅᴇᴍᴀʀᴋ Oғғ., Rᴇᴘᴏʀᴛ ᴏɴ Vɪʀᴛᴜᴀʟ Mᴀʀᴋɪɴɢ 12 (2014), http://www.uspto.gov/sites/default/files/aia_implementation/VMreport.pdf.
[8] Id. at 20.
[9] Robert Shaddox, Virtual Patent Marking, Wɪɴᴛᴇᴄʜ Bʟᴏɢ (Mar. 8, 2016), http://www.wintechblog.com/2016/03/virtual-patent-marking/.
[10] Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993).
[11] U.S. Pᴀᴛ. ᴀɴᴅ Tʀᴀᴅᴇᴍᴀʀᴋ Oғғ., supra note 7.