In the United States, the law governing patent rights includes provisions designed not only to protect inventors and patent owners but also to provide public notice of those rights. One such provision is the patent marking requirement, which directly affects a patent owner’s ability to recover damages from an infringer. Under 35 U.S.C. 287(a), a patent owner must give notice to the public that an article is patented in order to obtain damages for infringement that occurs prior to the infringer receiving actual notice of the infringement.
Actual Notice vs. Constructive Notice
Patent marking can be achieved through two primary forms of notice: actual notice and constructive notice.
Actual Notice occurs when the patent holder directly notifies the alleged infringer of the infringement, typically through a cease-and-desist letter, formal complaint, or other specific communication identifying the infringing activity and the patents at issue. The notice must be provided to the infringer by an affirmative communication. It is irrelevant that the infringer knew of the patent or knew of its own infringement. Damages can be recovered from the date the infringer receives this notice, provided infringement is proven.
Constructive Notice, on the other hand, does not require direct communication. Instead, it is achieved through proper marking of the patented product. If the patent owner can demonstrate that the product was marked in compliance with statutory requirements, constructive notice is deemed to have been given to the public, and damages may be recovered from the time marking began.
Constructive Notice Through Patent Marking
(1) Marking on Product or Packaging
To satisfy constructive notice requirements, a patented article must be marked with the word “Patent” or the abbreviation “Pat.,” followed by the relevant patent number(s), e.g.,
U.S. Patent x,xxx,xxx
Pat. x,xxx,xxx
Pat. US Dxxx,xxx
Ideally, this marking should be made directly on the product itself. However, if the nature of the product makes this impractical due to size, shape, or material, the marking may be placed on a label that is affixed to the product packaging.
Consistency and visibility are key. Sporadic or inconsistent marking, or marking that is not easily visible to the public, may be deemed insufficient to provide constructive notice.
(2) Virtual Marking
Recognizing the challenges and limitations of physical markings, Congress amended 287 in the America Invents Act (2011) to allow for virtual marking. Under this method, a product may be marked with the word Patent or Pat. followed by an internet address of a website where the relevant patent information is accessible. The following are examples of virtual patent markings that may be conspicuously fixed on the patented article:
Patent www.COMPANY.com/patents
Pat. www.COMPANY.com/patents
The website cannot simply list patents. The function of the website is to clearly associate the patented article with its corresponding patent number(s). The association must be specific. Mere direction to a website listing patents for all of a patentee’s products does not create the required association.
Virtual marking offers significant advantages, such as easier updates and cost-efficiency, particularly for companies managing numerous patents or frequent product changes.
Relevant case law has underscored the importance of compliance. In the case of Mfg. Res. Intl Inc. v. Civiq Smartscapes LLC, the court found virtual marking was insufficient where the website lumped products together as ALCD Display Patents, stating the listed patents may be used by the plaintiff’s products. Similarly, in VLSI Tech, LLC v. Intel Corp., the court held that web pages listing patents without directly associating them with specific products do not satisfy the marking obligation.
These decisions serve as a cautionary reminder that virtual marking, while flexible, must be executed with diligence and precision.
(3) Consequences of Failure to Use Patent Marking
Failure to comply with patent marking requirements can have serious implications for enforcement. If a product is not properly marked and no actual notice is given, the patent owner may be barred from recovering damages for infringement that occurred before the infringer was notified. This can result in significant lost revenue, particularly in cases where infringement began long before litigation commenced.
Moreover, inconsistent or inaccurate marking, whether by omitting certain products or listing expired or unrelated patents, not only undermines the availability of damages but may also expose the patent owner to allegations of false marking under 35 U.S.C. 292 or false advertising under the Lanham Act.
(4) Miscellaneous Considerations
The marking and notice requirements do not apply where a patent is directed to a process or method. However, where a patent includes a combination of product and process claims, failure to mark the physical product limits the damages recoverable for the entire patent.
The marking requirement applies to a patentee’s authorization of other persons to make and sell patent items in whatever form the authorization is given, such as in a patent license or settlement agreement.
Patent owners should maintain sufficient records for proving that they have complied with marking requirements.
A “patent pending” notice indicates that a patent application has been filed with the U.S. Patent and Trademark Office but has not yet been granted. While it does not confer legal rights to enforce the patent, it serves as a public warning that rights may be granted in the future, potentially deterring would-be infringers.
Takeaways
Patent marking is a critical aspect of patent enforcement strategy. By ensuring products are appropriately marked, either physically or through virtual marking, patent holders can preserve their right to recover damages and deter potential infringers. However, both methods require careful implementation and ongoing compliance. The objective of direct labeling or virtual labeling through a website is the same: providing clear, accurate notice to the public of a product’s patent protection.