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Patent Marking Generally and Under the New Law

Overview

Marking your products with a U.S. patent number can be an important aspect of protecting your business and enforcing your patents. More specifically, patent marking provides constructive notice regarding a patented article to potential infringers, which can facilitate the recovery of damages.

As implied in the Marking Statute, 35 U.S.C. § 287(a) (2006), “marking” notice serves important purposes including: “1) helping to avoid innocent infringement . . .; 2) encouraging patentees to give notice to the public that the article is patented . . .; [and] 3) aiding the public to identify whether an article is patented.” While the Marking Statute provides direction as to how a patented article should be marked, the primary purpose "is to provide information to the public concerning the intellectual property embodied in the article or design."

Incentives for Patent Owners to Mark

Marking products with patent numbers can provide many benefits including:

• Recovery of damages

• Establishing ongoing liability to infringers

• Providing an enhanced negotiation position

• Reducing the cost of litigation

How Does One Mark?

There are a variety of ways in which to mark a patented article, and the requirements can vary greatly based upon the type of product and the way the product is provided to the customers. Considerations include:

• “Patentees . . . selling within the United States any patented article . . . may give notice to the public that the same is patented . . . by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent.”1

• For patent applications pending on or after September 16, 2011, virtual marking (marking via the internet) is permitted via the America Invents Act. This may involve marking the patented article with the word “patent” or the abbreviation “pat.” together with an internet address that associates the patented article with the patent number.

• The patentee should review its patent portfolio and update product patent marking to reflect all its patents covering the manufacture and use of the product, or that cover the product itself.

Exceptions and Considerations

Various exceptions to the Marking Statutes may apply and nevertheless provide constructive notice of a patent owner’s rights. Some exceptions include:

• When an article cannot be marked, a label may be fixed to it or to the package in which the article is contained.1 For instance, if a patent is directed solely to a method or process, there may be no “article” available for marking.

• The marking of packaging may be sufficient where the patentee would have to bear a significant burden to mark the product, such as adding a manufacturing step, and where the cost of marking is commercially unreasonable.

• If a patent contains both method and apparatus claims but only the method claims are asserted against an infringer in a lawsuit, the apparatus itself may not necessarily have to be marked.

• If both apparatus and method claims are asserted and there is a tangible item to mark, a court may require marking of the tangible, unless an exception applies.

• It may be sufficient to mark one piece of a multi-component product where all pieces are included in the package delivered to the consumer.

• As an alternative to marking, written notice can be used to place potential infringers on notice. Written notice has both pros and cons including, e.g., starting the damages clock for willful infringement, and provoking the accused to file a Declaratory Judgment Complaint. As such, care should be taken in taking steps toward effecting written notice.

Closing Thoughts

Patent marking can be a helpful tool to establish constructive notice to potential infringers. When used properly, marking can help protect your business and assist in enforcement of your patents.

As the application of the Marking Statute, written notice and related law can vary greatly, we encourage you to contact us for an evaluation specific to your needs.

For contact information and other informative articles, please visit us on the web at ip-firm.com. © Crawford Maunu PLLC. All rights reserved. This material is for informational purposes only and should not be construed as legal advice. Also, as this material was prepared by individuals and not prepared by Crawford Maunu PLLC acting on behalf of any particular client/factual situation, this material should not be construed as providing a specific position applicable to any legal matter. Communication of this material is not intended to establish an attorney-client relationship. Legal advice should be sought from legal counsel.