Virtual Patent Marking
Joel Lutzker
General Counsel
March 27, 2013
Topics
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Why Mark?
Who Must Mark?
What to Mark?
When to Mark?
How to Mark?
Virtual Marking Primer
Questions
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Why Mark?
• 35 U.S.C. §287(a):
“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. “
• Failure to mark deprives patent owner of
ability to collect damages for pre-notice
infringement.
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Who Must Mark?
• 35 U.S.C. 287(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 ….”
• Patentees and licensees (including under
covenants-not-to sue) must mark
• Failure to include marking obligation in
license agreements is a common problem
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What to Mark?
• 35 U.S.C. 287(a):
“any patented article … 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.”
• Preferably affixed to the patented product
• Alternatively to a label or package
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What to Mark?
• Courts have generally taken a flexible
approach in determining whether marking on
packaging or a label is permissible
alternative to marking on product
• Factors considered include:
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Size of product
Cost of marking
Industry custom
Aesthetics
Whether there are other markings on the product
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What to Mark?
• Marking must be applied to complete
patented product
• Also must be applied to components
having no substantial use except for
assembly into complete patented product
See, Amsted Industries, Inc. v. Buckeye Steel
Castings Co., 23 F.3d 374 (Fed. Cir. 1994)
(failure to mark center plate component
suitable only for use in complete patented
railroad car frame resulted in denial of prenotice damages)
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When to Mark?
• Marking must commence on products sold
after patent issuance
• Marking must be substantially continuous
• No marking required for pure process patents
• Marking is required for patents containing
both product and process claims (failure to
mark product will result in denial of pre-notice
damages even for process claims) See,
American Medical Systems, Inc. v. Medical
Engineering Corp., 6 F.3d 1523 (Fed. Cir.
1993)
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How to Mark
• Conventional marking
35 U.S.C. §287(a):
“by fixing thereon the word “patent” or the
abbreviation “pat.”, together with the number
of the patent”
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How to Mark
• Conventional marking has significant
shortcomings
• Difficulty in listing large number of patents
• Difficulty in updating (newly issued or expired
patents)
• Expense (tooling, labeling)
• Inventory control
• Aesthetics
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How to Mark
• America Invents Act amended to Section
287(a) to authorize virtual marking:
“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”
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Virtual Marking Website Examples
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Virtual Marking Primer
• Website may be
internally developed and
maintained or
maintained through an
outside vendor, e.g.
www.patentmarking.com
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Virtual Marking Primer
• In-house or outside factors to consider
Size of portfolio
Velocity of portfolio
Availability of internal resources
Ability of IT system to track availability and
versions
• Ease of proof
• Budget
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Virtual Marking Primer
• Website features
• Unique landing page for patent marking data,
e.g. www.company.com/patents or
www.patentmarking.com/company
• May be unique landing page for each product,
but most companies have adopted a single
landing page with a list of products and
patents
• Landing page may link to pdf files for each
product (may be subject to attack)
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Virtual Marking Primer
• Elements of proof
• Availability of site
• Maintenance of data
• What patents listed
• When listings changed
• Security of site
• Records of access (not required but may help
in proving willfulness)
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Virtual Marking Primer
• Marking on product, label or packaging
must comply with the statute, i.e., “patent”
or “pat.” followed by url
• url alone will not suffice. See, A to Z
Machining Services, LLC v. National Storm
Shelter, LLC, 2011 WL 6888543 (W.D. Ok.
2011)
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Virtual Marking Primer
• International issues
Virtual marking may not comply with marking
provisions of foreign jurisdictions and may give
rise to innocent infringement defense and
denial of damages, e.g.:
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Australia
United Kingdom
Ireland
Others?
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Virtual Patent Marking
• QUESTIONS OR COMMENTS?
Joel Lutzker
Ocean Tomo, LLC
jlutzker@oceantomo.com
203.542.7219
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