Patent Marking Requirements

Patent marking is a notice requirement that significantly affects damage recovery: STATUTORY BASIS: 35 U.S.C. § 287: 'Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them... may give notice to the public that the same is patented, either by fixing thereon the word patent or the abbreviation pat., together with the number of the patent, or by fixing thereon the word patent or the abbreviation pat. together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, and...'; THE CRITICAL CONSEQUENCE OF FAILURE TO MARK: if the patent owner fails to mark its products and does not provide actual notice to the infringer, the patent owner can only collect damages from the date of actual notice of infringement; 'actual notice' typically means: the date the patent owner filed the lawsuit; OR an earlier date when the patent owner sent a specific demand letter identifying the patent and the accused product; THIS CAN COST MILLIONS: infringement that occurred before the lawsuit was filed but after the patent issued → NO damages for that period if the product was not marked; a patent owner who sues after 2 years of unmarked infringement loses 2 years of damages; PURPOSE OF MARKING: constructive notice to the public that the product is patented; informs competitors that infringement carries legal risk; enables damage recovery for the full statutory period (6 years under § 286) rather than only from the date of actual notice.

Patent marking has specific format and application requirements: TRADITIONAL (PHYSICAL) MARKING: FORMAT: the word 'Patent' (or abbreviation 'Pat.') + the patent number; 'Patent 10,000,000' or 'Pat. 10,000,000'; LOCATION: must be 'fixed' to the article; if fixation is impractical (due to the article's size, shape, or material), marking can be on the label or package; PATENT NUMBER: the patent application number (Publication Number) is NOT sufficient — must be the issued patent number; MULTIPLE PATENTS: if multiple patents cover the product, all applicable patent numbers should be listed; VIRTUAL MARKING (AIA 2011 CHANGE): the AIA (Leahy-Smith America Invents Act, 2011) amended § 287 to allow virtual marking; FORMAT: 'Patent' + 'the address of a posting on the Internet' that associates the article with the patent number; EXAMPLE: 'Patent: www.company.com/patents' — where that URL lists all applicable patent numbers for each product; BENEFITS OF VIRTUAL MARKING: no need to retool packaging every time a new patent issues or an old patent expires; one URL can cover hundreds of patents across a product line; easier to maintain accurate marking; can be updated instantly; WHAT MUST APPEAR AT THE URL: the URL must: be accessible to the public without charge; associate the specific patented article with the applicable patent numbers; be updated when patents change; LICENSEE MARKING: if the patent owner licenses the patent and the licensee manufactures the product, the licensee must also mark; if licensees fail to mark, the patent owner's damages may be limited; the license agreement should REQUIRE the licensee to mark; PRODUCT SCOPE: marking applies to physical products; method patents (process claims only) do NOT require marking under § 287(b) — method claims cannot be 'fixed' to a product.

Not all patented products require marking under the same rules: PRODUCTS THAT MUST BE MARKED: any article covered by an issued patent claim; a product that is manufactured, offered for sale, or sold in the US; if the patent includes both product claims AND method claims, and products are made and sold, marking is required; METHOD PATENTS — SPECIAL RULE (§ 287(b)): 35 U.S.C. § 287(b) exempts method (process) patents from the marking requirement; if the patent includes ONLY method claims (no product claims), there is no marking obligation; if the patent includes BOTH product and method claims, and the patent owner sells a product that uses the method → marking is required; the product-based marking requirement applies because there is a product claim; IMPORTED PRODUCTS: for products manufactured abroad and imported: marking should be applied during manufacturing; for products already manufactured and imported without marking, applying marking before sale satisfies the requirement; APPLICATIONS: patent applications (not issued patents): 'Patent Applied For' or 'Patent Pending' is permissible; does NOT create any legal notice for damages purposes under § 287 (no damages protection until the patent issues); PRODUCTS WITH EXPIRED PATENTS: if a patent expires or is abandoned, the product should be unmarked; failing to remove marking after expiration risks false marking liability (§ 292); a company updating to virtual marking can update its website immediately; COMPONENTS vs. FINISHED PRODUCTS: if a component is patented and sold separately (not only as part of a finished product), the component should be marked; if only the finished product is sold, marking on the finished product is sufficient; DIGITAL PRODUCTS: software and digital products can be marked through a virtual marking notice in the user interface or documentation.

False marking occurs when a product is marked with a patent number that does not cover the product: STATUTORY BASIS: 35 U.S.C. § 292: 'Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article... the word patent or any word or number importing that the same is patented, for the purpose of deceiving the public, shall be fined not more than $500 for every such offense.'; ELEMENTS OF FALSE MARKING: (1) the article is unpatented (the patent does not cover the article or the patent has expired); (2) the marking is intentional (done 'for the purpose of deceiving the public'); TYPES OF FALSE MARKING: marking a product with a patent that never actually covered the product; marking a product with a patent that has expired; marking a product with a patent application number as if it were an issued patent; PRE-AIA QUI TAM PROVISION: before the AIA, any person could sue on behalf of the US government (qui tam action) for false marking; plaintiffs received 50% of any fine; this led to an explosion of false marking litigation against many companies; THE AIA CHANGE (2011): the AIA ABOLISHED the qui tam provision for false marking; now only the UNITED STATES GOVERNMENT can bring a false marking suit; private parties can sue only if they suffer a COMPETITIVE INJURY from the false marking; WHAT 'COMPETITIVE INJURY' MEANS: a competitor who is deterred from entering a market because of a false marking claim may sue; a competitor who lost business because of false marking may have a claim; PRACTICAL IMPLICATIONS POST-AIA: the risk of private false marking suits is much lower after the AIA; however, the government can still bring suit; companies should still not falsely mark; UPDATE VIRTUAL MARKING WEBSITE REGULARLY: the virtual marking URL should be updated immediately when patents expire, are invalidated, or no longer cover the product.

Licensing creates specific marking obligations that can affect the patent owner's damage recovery: THE LICENSEE MARKING PROBLEM: when a patent owner licenses a patent and the licensee manufactures patented products: the licensee must mark the products; if the licensee FAILS to mark: the patent owner's rights to recover damages from an infringer may be limited to the date of actual notice (even if the patent owner's own products are marked); this is because § 287 requires marking of patented articles — if an unmarked licensee product is in the market, there is no constructive notice; THE LEADING CASE — ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL PRODUCTS (Fed. Cir. 2017): a patent owner must make reasonable efforts to ensure licensees mark; if the patent owner does not take reasonable efforts to police licensee marking, the patent owner's damages recovery is limited; the infringer can point to the unmarked licensee products as evidence that the market was not on constructive notice; HOW TO ADDRESS LICENSEE MARKING: LICENSE AGREEMENT PROVISIONS: require the licensee to mark all products covered by the patent with the applicable patent numbers (or virtual marking URL); specify who maintains the virtual marking website; ENFORCEMENT OF MARKING OBLIGATION: include a right to audit the licensee's marking compliance; include the right to terminate the license for failure to mark (or at least require cure of marking failures); MONITORING: periodically check that licensees are marking their products; document the monitoring effort (this documents 'reasonable efforts' to enforce marking); VIRTUAL MARKING SIMPLIFICATION: with virtual marking, the licensee can simply reference the patent owner's virtual marking URL — easy to include as a sticker or molded notation; when new patents issue, the URL is updated automatically — no need to retool the licensee's manufacturing process.