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A Better Partnership

Publications

Jan 2012
12
January 12, 2012

Patent Marking

Patent owners are encouraged to mark a patented article with “patent” or “pat.” and a corresponding patent number. Patent marking must be applied to the patented article, if possible. If not, it is permissible to mark the packaging.

The primary benefit of patent marking is that it functions as “constructive” notice of the patent giving the ability to collect damages for past infringement, even when the infringer did not see the marking and was not actually aware of patent.

Virtual Marking

Under the recently-enacted America Invents Act (AIA), patent owners have a new option: virtual marking. An article may be marked with “patent” or “pat.” and a web address. The webpage should be freely accessible and associate the article with the relevant patents. If virtual marking is used, the article no longer needs to list the patent numbers.

Virtual marking makes it easier to revise patent markings by simply editing a website. The changes will even extend to articles already in the market. Virtual marking can also consume less space with articles protected by multiple patents.

False Marking

The AIA also introduced changes to penalties for false marking. False marking arises when a party marks an “unpatented article” with the intent to deceive the public. An unpatented article could be:
 

  • an article that is redesigned so that it is no longer covered by a patent;
  • an article marked with a patent held to be invalid or unenforceable; or
  • an article marked as “patent pending,” when no application has been filed.

Under prior law, any person could initiate a false marking suit against a patent owner engaged in false marking, and retain half of the monetary judgment with the federal government receiving the remainder. The penalty for false marking is up to $500 per article.

With the enactment of the AIA, only the federal government may sue for the $500 per article penalty. A person who has suffered a competitive injury may also sue a patent owner engaged in false marking, but only for damages adequate to compensate for the competitive injury.

The AIA also narrowed the definition of false marking. Under the new law, articles marked with expired patents are exempted from false marking suits.

Marking Suggestions

Patent marking has obvious advantages and is generally recommended. The following tips are offered to increase the likelihood that articles are correctly marked with all applicable patents:
 
  • When a patent is granted, identify all articles that are covered by the patent, and apply marking as soon as possible following the issue date of the patent.
  • If multiple patents are listed, ensure the article is covered by each patent listed.
  • Re-evaluate patent markings if the article is redesigned or changed.
  • Remove markings for patents that have been declared invalid or unenforceable.
  • Remove “patent pending” once the patent application is no longer pending.
  • Include “US” or “United States” in marking to limit risk of false marking claim in foreign markets

When considering whether to mark an article, patent owners should weigh the cost of implementing a patent marking system against the potential loss of recovery for past infringement. When a patent owner is able to quickly identify infringements, patent marking may not be as important.
 

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