Patented or patent pending products often display a patent marking as an indicator of the intellectual property type protection granted to that product. Essentially, a patent marking gives constructive notice to the public and as such, potential infringers become liable for knowing about the patent. Currently, the patent marking statute recognizes two different methods of product marking— traditional and virtual patent marking.
Traditional Patent Marking
The traditional patent marking method is done by physically placing the patent number onto a product, or when impossible to, on the packaging or labeling of a product. For some goods, patent numbers are integrated into the manufacturing process by being built into the molds and physical design. The traditional patent marking method can become burdensome otherwise, costly when a product adds or removes patents because it could require that molds and product design continually be edited.
However, if a product only has only one patent, it may be advantageous to follow traditional patent marking. Additionally, if the company lacks a website it may be more convenient to follow the traditional method of patent marking. However, problems can still arise when the patent expires. For example, Solo cups fell into legal trouble when they failed to remove an expired patent that was marked onto their cups with a design mold. They attempt to eschew the manufacturing costs of changing the design mold to reflect the change in patent status. However, Solo ended up paying substantial legal fees when they were later sued for false patent marking.
Virtual Patent Marking
Virtual patent marking still requires goods and or its packaging to be physically marked. However, unlike traditional patent marking, the good is affixed with “Patent:” or “Pat:” and followed by a webpage address instead of a patent number. By utilizing virtual patent marking, production lines of newly manufactured goods will not have to be physically altered to reflect changes of its patents. If another patent is issued for a product, only the website would have to be updated to reflect the change. In the same vein, if a patent expires, it only needs to be removed from the website.
To qualify as a virtual patent marking, the webpage listed on the product must meet the following requirements:
- The website listed on the protected good must be publicly accessible without any fees or click-through agreements. For example, e-cigarette or alcohol websites often have website visitors confirm they are over a certain age to access the website. Having this kind of confirmation fails the website accessibility requirement of virtual patent marking.
- Furthermore, once a visitor accesses the patent webpage, it needs to have a clear description which product corresponds which patent number listed. Although there is no set guideline for associating product to patent, companies have used pictures, product identification numbers, and product numbers to clarify which product they are associating with each patent number.
Since virtual patent marking is a relatively new method under the patent marking
statute, the method lacks any significant litigated specifics. To be safe, it is best to speak to a patent attorney on your product’s virtual patent methods.
Patent Marking Methods and Software
Unfortunately, the patent marking statute is not applicable to patented methods because there is no way to mark a series of steps. The key is giving constructive notice if possible. For example, if the series of steps is directly related to a product, it may be feasible to note the patented method on the product.
In terms of patent marking software, the answer may vary depending on the type and form of the software. If the software comes in the physical form of a DVD or CD, it may be possible to mark a patent on the disc or packaging. If the patented software is acquired through download, a patent marking may be written on the about page, help page, or splash screen. Because of the differences that exist in software, it is recommended to double check with your patent attorney on how to give constructive notice for these goods.
Benefits of Patent Marking
The primary benefit of patent marking is that it allows patent owners the ability to collect damages from infringers upon giving constructive notice to the public. This means that alleged infringers are liable, even without actually knowing about a patent, if a good has a patent marking affixed. Without a patent marking, owners forfeit a right to collect damages until the owner informs the alleged infringer of the infringement (e.g. in a form of a cease and desist letter). Additionally, a product that lacks a patent marking affects it’s liability that cannot be placed on the alleged infringer until it can be proven that the infringer actually knew about the patent. It is important to note that advertising patents through brochures, forum discussions, and or other similar avenues does not qualify as constructive notice to the public under the patent marking statute. Essentially, patent marking products maximizes the potential infringement damages a patent owner by showing infringement at the earliest date possible.
For competitors, a patent marking can be beneficial in that it may help avoid potential patent infringement litigation down the line. Patent markings make it easier for competitors to find information on the scope of the patents granted for the products already on the market. Understanding what patents are already registered allows competitors to adjust their strategy accordingly before releasing products that may later be subject to patent infringement litigation.
Wang IP Law Group, P.C. is a Los Angeles based full service legal firm that specializes in intellectual property law (patent, trademark, copyright, and licensing agreement), business and commercial litigation, and a wide range of other legal matters including immigration, real estate, and landlord/tenant cases. Our multilingual attorneys represent clients from all over California and internationally from China, Taiwan, Hong Kong, Japan, and Israel.
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