Patent Notice

Patent marking is the mechanism by which patent owners provide constructive notice to potential infringers: STATUTORY REQUIREMENT: § 287(a) states that patentees who make, offer to sell, or sell patented articles must provide notice to the public of the patent by: (a) PHYSICAL MARKING: 'Patented' or 'Pat.' followed by the patent number(s) on the article; marked directly on the article; or on a label attached to the article; (b) VIRTUAL MARKING (added by AIA 2011): 'Patent' or 'Pat.' followed by a URL leading to a freely accessible webpage that lists the patent numbers covering the article; virtual marking allows easy updates as patent portfolio changes without changing physical packaging; CONSTRUCTIVE NOTICE: proper marking = constructive notice to the public; constructive notice means EVERYONE is deemed to know about the patent once marking occurs, even if they did not specifically look up the patent; DAMAGES CONSEQUENCE OF FAILURE TO MARK: if a patentee does NOT mark: only entitled to damages from the date the infringer received ACTUAL NOTICE of infringement; no damages for pre-actual-notice infringement; actual notice can come from: (a) filing the infringement complaint in court; (b) sending a specific written demand letter identifying the patent, the accused product, and the theory of infringement; vague letters about patent rights do NOT constitute actual notice; WHAT COUNTS AS PROPER MARKING: the patent number must be legible on the article (if feasible); if the article cannot be marked directly, the package must be marked; the URL in virtual marking must be freely accessible (no login required); the website must list the article and the applicable patent numbers; CONTINUOUS UPDATING: virtual marking allows real-time updating of the patent list as patents issue or expire; physical marking requires a manufacturing run change.

The marking requirement has major financial consequences for patent enforcement: DAMAGE LIMITATION RULE: § 287(a) limits damages to 'the period beginning six years before the filing of the complaint' (§ 286 six-year statute of limitations) BUT ALSO limits to the date actual notice was given if there was no marking; EXAMPLE: patent issues January 2015; infringement begins February 2015; patent owner sues December 2023 with no marking; if no actual notice was given before suit was filed, damages run from December 2023 (date of complaint) not February 2015; patent owner loses EIGHT YEARS of potential damages; WITH MARKING: if the patent owner marked all products from January 2015, constructive notice runs from the first sale of marked products; damages limited only by § 286's six-year lookback from complaint filing; LICENSEE MARKING OBLIGATION: if the patent owner has licensees who make products covered by the patent, the licensees MUST ALSO mark; failure of a licensee to mark can cut off the patent owner's constructive notice even if the patent owner's own products are marked; Crown Packaging Technology, Inc. v. Rexnord LLC (Fed. Cir. 2007): patent owner must exercise reasonable efforts to ensure licensees mark; MEDICAL DEVICE AND DRUG EXCEPTIONS: for patents claiming a method of treatment (not a product), the marking requirement does not apply because methods are not 'articles'; for Hatch-Waxman cases, specific rules apply to ANDA litigation; BURDEN OF PROOF: patent owner bears the burden of proving compliance with the marking requirement; lack of marking is NOT an affirmative defense — the patent owner must affirmatively prove it complied; SCA HYGIENE PRODUCTS v. FIRST QUALITY BABY PRODUCTS: laches defense largely eliminated for patent damages by SCA Hygiene (S.Ct. 2017); six-year statute of limitations + marking limitation = primary tools for limiting historical damage exposure.

Virtual marking was added by the AIA (2011) and has become the dominant marking approach: HOW VIRTUAL MARKING WORKS: instead of printing every patent number on every product, the patentee can mark with 'Patent' or 'Pat.' plus a URL (e.g., 'pat. patentbrief.org/patents'); the URL leads to a publicly accessible webpage that associates the article with the applicable patent numbers; the webpage must be freely accessible — no login, no payment; FREE ACCESS REQUIREMENT: the URL cannot require a user to register, log in, or pay; courts have interpreted this narrowly — any barrier can defeat virtual marking; WEBSITE REQUIREMENTS: list each article by product name or model number; list each applicable patent number; update promptly as patents issue or expire; maintain the URL without interruption (dead links = ineffective marking); PRACTICAL BEST PRACTICES: (a) use a dedicated patent marking page (e.g., company.com/patents); (b) maintain a table: Article | Patent Number | Status; (c) update within 30 days of patent issuance or expiration; (d) monitor the URL to ensure it remains accessible; (e) document the dates on which patents were added to the marking page; WHEN TO USE PHYSICAL vs. VIRTUAL: physical: simpler products with few patents; few packaging updates; regulated industries requiring specific label content; virtual: large patent portfolios; products covered by many patents; frequent patent additions from continued prosecution; COMMON MISTAKES: marking with patent applications (not yet issued patents) — patent applications do not satisfy § 287; failing to update the virtual marking page promptly; licensee products not included in the marking program; using a URL that redirects multiple times (may break constructive notice chain).

False marking is the prohibited practice of marking articles with inapplicable patent numbers: STATUTORY PROHIBITION: 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 the same is patented, for the purpose of deceiving the public' shall be fined up to $500 per offense; INTENT REQUIREMENT: the government must prove the false marking was done 'for the purpose of deceiving the public'; innocent errors without deceptive intent do not violate § 292; WHO CAN SUE: before the AIA (2011): any member of the public could file a qui tam suit and share in the penalty (qui tam relator got half the fine); the AIA changed this: only the US government or a 'person who has suffered a competitive injury' may sue; EXAMPLES OF FALSE MARKING: marking with an expired patent number on a product that is no longer covered by any active patent (arguably false marking); marking with a patent that does not actually cover the product (deliberate false marking); marking with a patent application number as if it were an issued patent; EXPIRED PATENT MARKING: Pequignot v. Solo Cup Co. (Fed. Cir. 2010): intent to deceive is required; marking with an expired patent number is presumptively deceptive if done knowingly; best practice: promptly remove expired patent numbers (or update virtual marking page) upon expiration; MARKING PATENT APPLICATIONS: 'Patent Pending' or 'Patent Applied For' is proper for patent applications; these phrases do not trigger § 292 even though the patent has not yet issued; marking with the patent application NUMBER as if it were an issued patent number IS improper; COMPETITOR INJURY SUITS: competitors can sue under § 292 if they suffer competitive injury from the false marking (e.g., lost sales due to customers believing the product is more extensively patented than it is).

Actual notice starts the damages clock even without marking — but must be given correctly: WHAT CONSTITUTES ACTUAL NOTICE: the Federal Circuit has held that actual notice requires: (a) the identity of the asserted patent; (b) the specific accused product or method; (c) the theory of infringement (how the product infringes the patent claims); INADEQUATE NOTICE: vague letters stating 'we have a large patent portfolio that may cover your products' do NOT constitute actual notice; general licensing solicitations without specifying particular patents; negotiation letters that do not specifically identify the infringement theory; SRI INTERNATIONAL INC. v. ADVANCED TECHNOLOGY LABS (Fed. Cir. 2001): actual notice must be specific; the patentee must affirmatively act to communicate specific notice; FILING THE COMPLAINT: filing the infringement complaint constitutes actual notice from the date of filing at the latest; the complaint identifies the patent, the accused products, and the infringement theory; PRE-SUIT DEMAND LETTERS — BEST PRACTICES FOR PATENT OWNERS: clearly identify the specific patent number(s); specifically identify the accused product(s) by name and model; provide a claim chart or at least a summary of how the accused product practices the patent claims; state the date from which the patent owner seeks damages; send via certified mail with return receipt to prove date of receipt; LEGAL RISKS OF SENDING DEMAND LETTERS: if letter is overly aggressive or asserts claims in bad faith, recipient may file a declaratory judgment action; if letter asserts patents the sender knows are invalid, it may constitute an antitrust violation or bad faith; Lumen View Technology v. findthebest.com: demand letters must be based on a proper infringement analysis; baseless demand letters can trigger fee awards.