The America Invents Act (AIA) allows patented products to be marked “virtually” by using a notice directing consumers to visit a site on the internet. See USPTO’s Report on Virtual Markings, September 2014. To comply with virtual marking requirements, the owner must mark the product itself, or the product’s packaging if it is not possible (or too burdensome) to mark the product itself. The marking should include the word “patented” or “patent” or even just “pat.” along with a freely-accessible, internet address (under the control of the patent holder) where consumers can find any patent numbers applicable to the patented product. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011); see particularly Section 16 (Markings).
Virtual marking provides many advantages over traditional markings. The most advantageous aspect of virtual markings is probably the ease in which the markings can be updated. Others have noted that virtual markings may provide an improved aesthetic appeal over traditional markings on products – which typically require the product to include a number or series of numbers that identify the one or more patents covering the product.
In my experience with patent clients in Orange County, virtual markings are advantageous especially where more than one patent cover a product – and more so when later patents are issued after a parent patent. Traditionally, our clients would have to update the product or product packaging itself, which can be costly and burdensome. Using virtual markings however, patent holders may simply update their website. Have questions about marking your patented products? Our Orange County patent attorneys can guide you. I provide a sample virtual marking at the end of this article; but what exactly are the requirements for marking patented products?
The Rules Concerning Patent Marking Requirements
The relevant statute is 35 U.S.C. §287(a), which provides: “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 when, from the character of the article, this cannot 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 to so 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.”
The courts have found that under §287(a) “[a patentee] is entitled to damages from the time when it either began marking its product in compliance with section 287(a) [i.e. providing constructive notice], or when it actually notified [the accused infringer] of its infringement, whichever [is] earlier.” American Medical Sys., Inc. v. Medical Eng’g Corp., 6 F.3d 1523, 1537, 28 USPQ2d 1321, 1331 (Fed.Cir.1993); see also Maxwell v. J. Baker, Inc., 86 F. 3d 1098, 1111 (Fed.Cir.1996). Furthermore, the Courts have construed section 287(a) to require that “once marking has begun, it must be substantially consistent and continuous in order for the party to avail itself of the constructive notice provisions of the statute.” Id.
Compliance with section 287(a) is a question of fact, and the patentee has the burden of pleading and proving at trial that she complied with the statutory requirements. See Motorola, Inc. v. United States, 729 F.2d 765, 770, 221 USPQ 297, 300-01 (Fed.Cir. 1984); see also Dunlap v. Schofield, 152 U.S. 244, 248, 14 S.Ct. 576, 577, 38 L.Ed. 426 (1894) (“[T]he duty of alleging, and the burden of proving, either [actual notice or constructive notice] is upon the [patentee].”).
A patentee who makes, uses, or sells its own invention is obligated to comply with the marking provisions to obtain the benefit of constructive notice. See American Medical, 6 F.3d at 1538, 28 USPQ2d at 1332 (“Full compliance [is] not achieved until [the patentee] consistently [marks] substantially all of its patented products, and [is] no longer distributing unmarked products.”). The marking provisions also apply to “persons making or selling any patented article for or under [the patentees].” 35 U.S.C. § 287(a). Thus, licensees and other authorized parties must also comply. See Amsted Indus., Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 185, 30 USPQ2d 1462, 1467-68 (section 287(a) applies to express and implied licensees).
When the failure to mark is caused by someone other than the patentee, the court may consider whether the patentee made reasonable efforts to ensure compliance with the marking requirements. See Maxwell v. J. Baker, Inc. at 1112. Thus, failure by the licensee to fully comply with the patentee’s marking demands is not necessarily fatal to the patentee’s claim for damages against an infringer.
Manner of Marking; Sufficiency
To satisfy the marking requirements of §287(a), a patented article must be marked either with the word “patent” or the abbreviation “pat.,” together with the applicable patent number[s]. The patentee possesses wide discretion with respect to the location, format and size of the marking within reason. Whether marking on the packaging serves as the most effective notice to the public of a product is a fact issue for trial. See Global Traffic Technologies, LLC v. EMTRAC SYSTEMS, INC., 946 F. Supp. 2d 884 (D. Minn. 2013).
Courts have held that patent markings on packages complied with § 287 if it would have been burdensome for the patentee to undergo additional manufacturing steps to put a patent marking on the product. See Rutherford v. Trim-Tex, Inc., 803 F. Supp. 158 (N.D. Ill. 1992). However, “[w]here the patented article has markings or printing on it, other than the appropriate patent marking, then the alternate form of patent markings on the package is not sufficient compliance with the statute.” Id. The rationale behind stricter conformity to the marking provisions of § 287 when the article contains other markings is bound-up with the purpose of the statute to give notice to the public. Where the public finds markings or writings upon the article itself, the public should be able to rely upon the fact that a patent, if it exists, should also be noted with that writing.
The law remains unsettled. See for example See Black & Decker Corp. v. POSITEC USA INC., 118 F. Supp. 3d 1056 (N.D. Ill. 2015). And other courts examining the sufficiency of patent marking on packages have rejected Rutherford’s bright-line exception and denied summary judgment, holding that the sufficiency of patent markings is a fact issue for trial to be determined in light of the public notice function of the statute. See e.g., Global Traffic Technologies, LLC v. Emtrac Sys., Inc., 946 F. Supp. 2d 884, 906 (D. Minn. 2013) (finding that “[w]hether marking on the packaging” satisfied § 287 because it “served as the most effective notice to the public of this product, given its multiple and hidden components, is a fact issue for trial); Ethicon Endo-Surgery, Inc. v. Hologic, Inc., 689 F. Supp. 2d 929, 946 (S.D. Ohio 2010) (holding that the presence of other markings on a patented article was insufficient to demonstrate non-compliance with § 287 because “in certain situations, like the present case, marking the device with information other than the relevant patent information may be more practical and more informative to the public”); Stryker Corp. v. Zimmer Inc., 1:10-CV-1223, 2012 WL 6821683 (W.D. Mich. Nov. 29, 2012) (emphasizing “the marking statute’s notice-serving purpose over the precise mechanics of compliance” and considering the sufficiency of package marking under the following factors: (1) size of the product, (2) the cost of marking the product itself rather than the packaging, (3) industry norms for marking similar products, and (4) whether an alternative form of marking would provide users with adequate notice of the patent).
General Guidelines for Sufficiently Marking Your Products
Make sure your licensees or even downstream customers including distributors mark the products or provide the public with products bearing patent markings. In the event, it is difficult to get these third parties to comply, keep records of your reasonable efforts so that their lack of compliance with patent markings does not affect your ability to recover damages. Make sure the marking is easy enough to locate and read for notice to the public to be effective. If a marking is too minute or hidden, then it is likely ineffective. Finally, try to mark your products or packaging as soon as possible – this avoids losing recovery of damages. However, remember that just because you have not marked your products as soon as possible, this does not forever preclude recovery of damages – and only damages accrued during the time prior to compliance with the marking or actual notice (i.e. filing a lawsuit or sending a cease and desist letter) will be affected. Hence, a temporary failure to mark does not bar recovery for the period after marking begins, and patent holders should comply with the requirements of §287(a) as soon as possible. Finally, because patent markings “must be substantially consistent and continuous” it is important to upkeep this practice throughout the life of the product – updating the markings with newly issued patents if subject to more than one – and making sure to remind (if not possible to require) licensees and downstream customers to do the same.
Patent holders should take care to comply with the requirements for marking patented articles. Failure to mark both increases the likelihood of infringement and limits the patent holder’s ability to collect damages for infringing activity prior to marking or actual notice of infringement.
Considering the above, a proposed strategy for marking a patented product may include Virtual Markings; this can comprise:
- Affixing labels on the packages of the existing inventory under the patent holder’s control;
- Requesting that the patent holder’s customers and licensees affix similar labels to their existing inventories, and providing said labels to the customers and licensees for implementation;
- Making sure each label has wording that indicates the patented product is protected by one or more US Patents;
- Providing the list of the one or more US Patents on a website that is freely accessible to the public and controlled by the patent holder; and
- Affixing label that may include: “Pat. www.[company].com/patents”
The Virtual Patent Marking page online may include the following information:
VIRTUAL PATENT MARKING
This page is intended to serve as notice under 35 U.S.C. § 287(a).
The following U.S. patents apply to [Company] products, including but not limited to:
US Patent Numbers: 9,402,453; 9,402,453; 9,402,453. Other patents pending.