Virtual Patent Marking

You have an issued patent on your product, now what? Perhaps you are in the works to get your product manufactured and on store shelves. Well here is one item to consider that may make this process less burdensome and costly.

Section 287(a) of Title 35 of the United States Code provides that constructive notice of a patent may be given by marking the patented article with the patent number, and that, “[i]n 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.”

By way of background, you may recall seeing something like “Patent 1,234,567” or “Pat. Pending” featured on a product. This is known as “patent marking” and notifies the public that the product they are buying or using is patent protected.

Section 16 of the Leahy-Smith America-Invents-Act (AIA) has made it easier to provide constructive notice - virtual patent marking. According to Section 16, now, by fixing the word “patent” or abbreviated “pat.” together with a URL or internet address with free access to the public, one will be “virtually marking” their patented product, and in turn, giving constructive notice of a patented article with an associated patent number.

Depending on the patent owner, virtual marking could provide great benefits over the traditional way of patent marking. For instance, in the case of a single product that has multiple components covered by different patents, it would be more convenient to place a mark displaying a website URL, which when visited, lists all the patent numbers associated with the product. Also, in the instance of patent owners who manufacture multiple products each under different patents, the owners can now mark every product with one mark displaying one website. The website may be maintained and updated as often as necessary and will save overhead production costs.

You can see how the Kimberly-Clark Corporation is currently utilizing virtual marking and taking advantage of the new virtual marking method here.

As it is currently about to be three years since enactment of the AIA, the U.S. Patent and Trademark Office is assessing and reporting on the effectiveness of virtual marking, including whether virtual marking is effective for giving public notice; whether virtual marking has limited or improved the public’s ability to access patent information; whether and what legal issues arise from virtual marking; and whether virtual marking has any deficiencies. The review is open for public comment, and more information can be found here.

While virtual marking has been an acceptable patent marking method for three years, it may be new and helpful to you and your business. Please contact an HJK attorney for more information, suggestions, and advice on your own virtual marking.

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