Enriching Life Through Innovative Ideas SM

Patent Marking

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.

If you have questions or would like a consultation in regards to the content of this publication, please contact us by calling (888) 827-8880 or email us at [email protected] For more information about the firm and the services please visit www.TheWangIPLaw.com.

 

FindLaw Network

What Our Clients Say

Starting a new business can be a bit scary. Aside from worries of failure, there’s also the hassle of making sure all legal paperwork are properly filed. I reached out to Mr. Wang (Tommy) because of his excellent reviews and reputation and I am so glad I did. He was thorough and meticulous in answering all of my concerns and took time to find out special laws and policies regarding the kind of business I am starting. I could focus on the daily practical side of starting my new office without worry because I felt Tommy was reliable and took my case seriously. My business is opened and it’s all been a smooth start because of Tommy’s help. I have plans to start another business venture in the next few years and I already know I’ll be coming back to Wang IP Law.

The Shindig W.

I came to Tommy for help reviewing a licensing agreement I had secured with a well-known manufacturer. Tommy made sure I understood all the details in the contract and he negotiated with the company to improve my side of the deal. I mentioned to Tommy at my first consultation that we were looking to expand throughout the US and were investing a lot of money to make a big entrance into the market. I did not think I would have my store open so soon but Tommy also has connections with the local area and realtors to help me secure the location for my first store in the Los Angeles area. Tommy works a lot with the local businesses and he understands how to transition from the Asian market to US market. Within 8 months my store was open for business and fully operating. I must recommend Tommy to any business owners looking for help with contracts and improving their side of the deal. Tommy has the knowledge and experience to make sure there is a smooth process to open for business here, and make sure that your company is set up for success.

LI H.

I think Tommy and his team by far considered the best people to work with in my 16 business years. Beside quick responses to all my inquiries, they also done things right and providing very professional solutions. I’m highly recommending Tommy and his firm to all business owners.

Calvin C.

I have been working on my Utility Patent for almost 4 years. I have hired and fired two very reputable IP firms because with all their expertise and reputation for being some of the top firms in IP Law, I felt a lack of connection and care in my product, time and financial investment. Then I found Tommy and his team. Tommy does not waste time. He and his team are professional and extremely thorough. After 4 years, I finally found a legal team that I felt spent the time to really understand the components of my utility patent. Tommy also very mindful of cost and how and where my money would be better spent. I really feel I am in great hands with Tommy and his team. They have been patient with my revisions. And most importantly, they made me feel that they fully understood the importance this patent is to me. It has been a great and comforting pleasure working with Tommy.

G.L.

Read All