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The patent mark imperative


Individuals, small businesses, and even global corporations often fail to properly mark their products with patent information after a patent is granted.  Rarely is there a good excuse for not marking, especially after spending several years battling with an examiner in the U.S. Patent and Trademark Office to get a patent issued in the first place.  This seemingly minor oversight can ultimately cost patent owners millions of dollars in the form of unrecoverable damages. 

A patent holder who successfully prevails in an infringement suit may only recover damages for the period of time after an infringer receives notice of the infringement.  Notice can be provided in one of two ways: actual notice, where the patent owner directly informs the accused infringer of the patent and identifies the allegedly infringing product, typically through a letter, or constructive notice, where the patent owner marks the patented product with the word “patent” or “pat.” followed by the patent number.  The damages clock starts ticking in the earliest scenario.

Patent holders are strongly encouraged to follow the path of constructive notice, which puts everyone on alert that the product is patented.  In the real world, it is incredibly difficult for owners to promptly identify and diligently pursue each potential patent infringer with an actual notice letter.  Constructive notice removes that challenge and, at the same time, enhances the potential damages award.  When served with a patent infringement complaint, an infringer may be liable for years of damages despite not ever hearing a word from the patent owner’s lawyer.  The looming threat of hefty damages may then motivate an infringer to quickly settle the matter.

To the additional advantage of patent owners, the recently enacted virtual patent marking provisions of the America Invents Act (AIA) permit a new form of constructive notice: owners may now mark their products with “patent” or “pat.” and a URL designating a website where the patent information can be found.  The only requirements are that the website must be accessible to the public without charge, and it must identify the product and the patent number(s) covering the product.

The benefit of virtual marking is significant; patent holders no longer have to continuously monitor and modify patent markings on products.  Now a patent owner can simply mark a product once with a URL and with relative ease, quickly and seamlessly update the website to add or remove patents.  This avoids the considerable expense associated with re-producing an entire line of products or creating a new manufacturing mold to identify changes in patent protection.

Generally, for purposes of constructive notice, the product itself must be marked with patent information (patents directed only to methods need not be included).  If it is not feasible to directly mark the patented item, the patent owner may potentially use a label to mark either the article or the article’s packaging.  But the choice between marking the patented article or its packaging is not entirely discretional, and the latter is generally considered a narrow exception to the rule.  Additionally, the overwhelming majority of courts have found that if a patented item has markings or printing other than the appropriate patent marking, then patent marking on the package is not sufficient to comply with the marking statute. 

In an age of unprecedented growth of new patents being granted and new patent actions being filed, the benefits of proper patent marking cannot be emphasized enough.  Patent holders should strive to preserve their rights to recover pre-suit damages through constructive notice. The new AIA patent marking provisions make it more convenient than ever to give such notice through virtual marking, enabling patent holders to better preserve their rights and recoup pre-suit damages if their patents are eventually infringed.

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Mher Hartoonian

Mher Hartoonian is an intellectual property attorney with Holland & Hart. His practice spans patents, trademarks, copyrights, and licensing, as well as domain name complaints pursuant to ICANN's dispute resolution policy. He can be reached at 303-295-8079 or MHartoonian@hollandhart.com

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