Under U.S. patent law, damages resulting from a successful claim of patent infringement can only be recovered from the date that a patent holder gave infringers proper notice of the Patent. Traditionally, providing proper notice meant physically marking the article, such as through an engraving or molding process or labeling, with relevant, valid and unexpired patent numbers. Under the New Patent Marking Rules (also know as virtually patent marking), a patent holder may use a website to provide a listing of its products and any associated patents where at least one claim of the patent covers the product so long as the requirements of the virtually patent marking are met.
Proper patent marking notice required for damages
Under U.S. patent law, damages resulting from a successful claim of patent infringement can only be recovered from the date a patent holder gave infringers notice of the Patent. Notice can be either “constructive” or “actual,” with proper marking of a patented product constituting constructive notice to the public and direct communication with a potential infringer of an existing patent constituting actual notice.
Types of damages in patent infringement litigation
There are typically two types of damages in patent infringement litigation, a reasonable royalty relating to the sale of the infringing products, and the more costly “lost profits” on the lost sales of a patent holder’s patented product.
Under U.S. patent law, the patent holder may seek damages for up to 6-years prior to the filing of a claim for patent infringement if the patent holder has provided proper constructive notice. As such, proper marking of a patented product can significantly impact the amount of damages available to a patent holder.
Traditional marking a patented product
Traditionally, properly marking a patented product meant physically marking the article, such as through an engraving or molding process or labeling, with relevant, valid and unexpired patent numbers. Courts have held that merely marking a product with the terms “Patented” or “Patent Pending,” without reference to a specific patent number or serial number, was not sufficient.
New Patent Marking Rules allow for the use of a website to list products and any associated patents
Under the New Patent Marking Rules (also know as virtually patent marking), a patent holder may use a website to provide a listing of its products and any associated patents where at least one claim of the patent covers the product.
Requirements for virtually patent marking include the following:
- Physically marking the products with the word “patent” (or suitable abbreviation) and a website or URL address.
- Patent “web address”
- Pat. “web address”
Although there are currently few cases involving the new virtual marking provisions, at least one court has held that virtual marking requires the patent holder to both list patent numbers on a website and to mark the protected product with the word “patent” and the website address.
- Creating and designating a website/web-page containing a company’s product or list of products and any associated patent(s) that have at least one claim that covers the product.
- The website/webpage must show and/or identify each of the product(s) and all the valid patents that are associated with that particular product. The web page must clearly identify the product (e.g., brand name, product image, model number, etc) with sufficient specificity so as to avoid confusion between different products. The web page must also clearly associate the patent numbers with the particular product. The user should not have to click through additional links to identify the patent numbers associated with the product. *It is not necessary to provide a downloadable copy of each patent listed on the web page.
- The website must be publicly available at no charge, without having to register, subscribe, or create a profile and must be constantly updated with changes to the patent status of the products covered.
- For products containing a patent marking where the patent life has expired and the product is still in the stream of commerce, the patent holder can avoid potential issues with the Patent Office’s False Marking Statute while not having to remove the existing products from the stream of commerce by updating the webpage to identify the expired patent(s).
Example of virtually patent marking
In our opinion the below example website listing plus the product marking should meet the requirements of the New Virtual Marking Rule. In our opinion you should be able to mark a mold with the word “PATENT” followed by the Company/Individual Web Address, which has a link to the associated (your) patents. The status can then be updated as shown in the below example.
REGISTERED TRADEMARK® (OR) TRADE NAME ™
Brief general description of the patented product
US Patent. No. 5,555,555 [EXPIRED]
US Patent. No. 6,666,666
US Patent. No. 7,777,777
As a disclaimer since the law for the “virtual marking provision” is new, we cannot verify that the example listings above will be upheld as proper marking. However, in our opinion the above listing would appear to meet the criteria for the new virtual marking provision.
Marking of Publish Patent Applications
In regards to the marking of Publish Patent Applications, under the New Virtual Marking Rules, although marking products or websites with published applications is not required, it is recommended that Publish Patent Applications also be marked as the New Rules does provide a patent holder with a “provisional” right to possibly obtain a reasonable royalty from a potential infringer during the period beginning on the date of publication of the application and ending on the date that the patent is issued if the potential infringer had notice of the published patent application. An example of a marking of a Publish Patent Application on a covered product would be Pat. Pending “web address”.
With how integral and prevalent websites are in the current business environment, the New Patent Marking Rules provides patent owners with a tool to not only provide updated proper notice to potential infringers in order to satisfy U.S. patent law for damages but also to quickly streamline the process compared to the traditional physically marking the patented articles so long as the requirements of the New Patent Marking Rules are met.
Please feel free to contact Jacobson and Johnson LLC if you have any further questions.