The Limited Monopoly® Patent Marking Has Gone Virtual - Or Has It? By Robert Gunderman, PE and John Hammond, PE
Patent Marking- The Basics The patent statutes for many years have required patented articles to be marked as such. Although many variations exist, the essential elements are simply that the patented article should be marked with the word “Patent” or the abbreviation “Pat.” together with the number of the patent. Variations include adding the country, such as “U.S. Patent” and then the number of the patent, indicating that the patent is a design patent (although the D designation in the patent number is usually sufficient), indicating that there are other patent(s) pending, etc. A quick walk through a Big Orange or a Big Blue home improvement store will reveal more products marked in this way than Carter has Liver Pills1. There are also penalties for false marking, marking a product with an expired patent in an attempt to ward off the competition, or otherwise not providing truthful and constructive notice to the public of your patent rights.
Failure to Appropriately Mark If an article is not appropriately marked or there are no markings whatsoever, effective notice is not given to the public, and such a failure may preclude the recovery of damages for infringement until such time as effective notice is given. Effective notice may be in the form of proper markings, a written notice, or filing an action for infringement. Simply put, the cost to not properly mark can be significant in terms of lost revenue and the inability to enforce patent rights, both of which are strong motivators to mark your products.
Along Comes the America Invents Act (AIA) The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011, resulting in sweeping changes to the 12 | The ROCHESTER ENGINEER APRIL 2019
U.S. patent system. Among these changes was an amendment to 35 U.S.C. §287(a), the section of the law that defines how constructive notice is given to the public that an article is patented. The amendment allows patented articles to either be physically marked or “virtually marked.” Virtual marking provides an alternative to physical marking where the article is instead marked with the word “patent” or the abbreviation “pat.” followed by an internet address that associates the patented article with the number of the patent.
The Reasoning Behind Virtual Marking The virtual marking amendment was proposed by Congress as a way for manufacturers to save the ongoing expense associated with changing tooling, product materials, packaging, etc. as new patents issue and old patents expire. Instead of new tooling and inventory updates to indicate a patent number change, the manufacturer can now simply update a web site with the current patent information. Another reason given for the virtual marking amendment is to facilitate the effective marking of small products.
How to Implement a Virtual Marking Program On the surface, it seems straightforward. Simply mark all of your patented products with the words “patent www.companyXYX. com/patents”, but of course, chose your own web address that takes the user to a page that lists your patents. There are many examples of companies that have implemented virtual patent marking, but strangely, virtual marking is still not the runaway success that would have been expected like most things that are Internet based. While in 2014 the United States Patent and Trademark Office issued a report to Congress (as was required the limited monopoly
