10/23/2014

Virtual Marking for Patented Articles

The AIA introduced many changes to US patent law, including an amendment to 35 USC 287, which is frequently referred to as the “marking” statute.  Marking a patented article provides constructive notice to the public of the patented status of the article.  Failure of a patent owner to properly mark a patented article can preclude damage recovery for infringement until effective notice is provided to the infringer. The AIA added a mechanism for “virtual marking” of an article. The relevant section is reproduced below with emphasis added to highlight virtual marking language.

35 USC 287 - Limitation on damages and other remedies; marking and notice

(a)Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, 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, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.  (Emphasis Added)

Prior to the AIA, 35 USC 287 only provided for physical marking of a patented article by placing the word “Patent” or “Pat.”, together with the patent number, on the article or its packaging.   Virtual marking provides an alternative to pre-AIA marking provisions.  To comply, a patent owner marks appropriate products with the word “Patent” or “Pat.” together with the URL address of the Internet posting accessible to the public without charge.  For example:

Virtual marking provides for the dynamic update of patent information, without the need to make costly changes to a manufacturing process.  The ability to maintain a complete listing of associated patents is critically important as marking provisions should be utilized in connection with all patents applicable to a product.  If an applicable patent is not included, damages resulting from infringement of that patent will not be available until actual notice is provided, and then only if infringement continues after notice is provided.

We recommend virtual marking in association with a product’s branded name (and model or version as applicable), followed by listing of applicable patents that apply to that product.  Reference to “other patents pending” is frequently used by companies in their virtual marking program where appropriate.

Examples of virtual patent landing pages maintained pursuant to 35 USC 287 include: http://www.bunn.com/patents/ and http://www.tivo.com/patents.

For more information or questions regarding 35 USC 287 or the "marking" statute, please contact Patent Practice Group Chair Ilan Barzilay at ibarzilay@pierceatwood.com.