Shout It From the Rooftops: The Ins and Outs of Patent Marking

Posted by on Aug 26, 2020 in Intellectual Property

Why Patent Marking?

A patent owner may recover monetary damages for up to six years of retroactive patent infringement. However, subject to certain exceptions described below, damages do not begin to accrue until the alleged infringer has been given notice that it is infringing a particular patent. When a patented “article” (i.e., a product) is properly marked, alleged infringers are deemed to have “constructive notice” of the patent owner’s rights and can be held liable for damages from the date the infringement begins even if they do not have “actual notice” of the patent owner’s rights.

On the other hand, if the patent owner fails to mark its patented articles, monetary damages begin to accrue only after the alleged infringer has received actual notice (e.g., via a cease and desist letter) of the patent owner’s rights, which could be years after the infringement began. For this reason, in many cases, without proper patent marking, the costs of litigation can outweigh the recoverable monetary damages. However, if the asserted patent only covers methods or if the patent owner never made, sold, or offered to sell a patented article, there is no marking obligation since there was nothing to mark.

Thus, to maximize the potential monetary recovery for infringement, patented articles should always include an appropriate marking to show that those articles are patent protected.

Articles may be marked “patent pending” once a patent application (i.e., a provisional or non-provisional patent application) covering that article has been filed. “Patent pending” does not provide any legal protection for the invention or impact potential monetary damage awards. However, it can deter competitors from copying a design that could potentially expose them to patent infringement liability. Many inventors file provisional patent applications and mark their articles “patent pending” with no intention of filing or prosecuting a corresponding non-provisional patent application. They might employ this strategy to attract customers and investment and deter competition without the (often) significantly higher costs associated with the preparation and examination of a non-provisional patent application.

How to Mark Your Articles

There are two options for properly marking patented articles: traditional and virtual. In either case, it is essential that “substantially all” patented articles (i.e., at least 65%, in some cases) be marked with the patent number, consistently and continuously.

1. Traditional Patent Marking

Traditional patent marking requires that a marking be applied to the article itself or applied to the packaging if the article itself cannot be marked. The marking must include either the word “Patent” or the abbreviation “Pat.” followed by the relevant patent number(s). Below is an example tag that might be placed onto a patented article:

The patent owner has an obligation to mark (and not to mismark) the patented article with only the patent number(s) that cover the article and to update all patent markings when the patent status changes (or to require its manufacturers, licensees, etc. to do so). For example, the marking must be updated to replace “patent pending” with the newly-issued patent number(s) or to remove “patent pending” if the application is abandoned. Failure to correctly mark patented articles or failure to update those markings could make the patent owner liable for “false marking.”

2. Virtual Patent Marking

Alternatively, patented articles may include “virtual” markings that consist of the word “Patent” or “Pat.” followed by the URL of a website that lists the relevant patent(s) for those articles. Advantages of a virtual marking are that the same marking may be applied to all articles. That marking never changes, and, therefore, the manufacturing and assembly processes never change. Additionally, updating the patent notice on the corresponding website is fast and easy. Below are examples of a virtual marking and a corresponding website.

Since the list above includes both U.S. and foreign patents, the patent number includes the appropriate two-letter country code. For example, “CN” denotes a Chinese patent and “AU” denotes an Australian patent. U.S. utility patents are indicated by “US” and U.S. design patents are indicated by “USD.”

The importance of a patent owner correctly and consistently marking its patented articles cannot be overstated. As shown above, providing virtual patent markings is a simple but important step that patent owners can take to protect their inventions and that can turn a “loser” infringement case into a “winner.”

If you have questions about patent enforcement, including patent marking best practices, please contact Stephen Adams or a member of the Intellectual Property team.