United States patent law requires a patent holder to provide actual or constructive notice to the public of its utility patents in order to recover damages for infringement of a product patent. 35 U.S.C. § 287(a). Although the marking requirement does not apply to process or method patents, owners of such patents may choose to mark products made using those methods or processes as well. Patent holders have long complied with this marking requirement by marking (or requiring their licensees to mark) their products or their packaging with the word “patent” or the abbreviation “pat.” and the specific patent numbers covering those products. In 2011, the Leahy-Smith America Invents Act amended the law to provide patentees with another, more efficient option by allowing them to simply mark their products or packaging with the word “patent” or the abbreviation “pat.” and a free-access Internet address. For example, “pat. www.acmeproducts.com/patents” is a commonly used format. That URL address would then link to a dedicated page on the company’s website that lists the applicable patent numbers.
This “virtual patent marking” enables patentees to comply with the marking requirements much more easily and inexpensively. Manufacturers no longer need re-configure their product molds or packaging each time an applicable patent is granted or expires, as any changes may be made simply by modifying the accompanying web page list. In addition, marking products or packaging with a single URL address may prove less distracting to customers than stamping every product with a potentially extensive list of patent numbers.
Another significant benefit of virtual patent marking is that it may be used to help drive traffic to patentees’ web sites. Companies should therefore consider upgrading their web sites and marketing programs to maximize the potential for informing the public of new products and services along with the required patent notifications. Also, the ability to determine the IP addresses of visitors to the company website not only enables the patent holder to identify potential customers but also to determine the extent to which potential competitors are researching the company’s products, thereby providing it with an early-warning system for potential infringement.
The benefits of virtual marking are extensive, but they come with increased obligations as well. Precisely because a company can update a web site easier, cheaper, and faster than it might retool its machinery, patent holders should anticipate that Courts will expect them to be precise in their virtual marking, and to keep their web pages both current and constantly accessible. Along these lines, companies should establish a policy for regular updates of patent information web pages, as well as detailed records of when those updates occur.
Please contact us if you would like more information regarding this topic or our assistance with developing a virtual patent marking program.
Raphael Bellum – Advocates for Innovation – Advisors on Invention℠
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