Introduction
In the United States, patent marking is an important aspect of IP management. At its core, patent marking involves labeling a product—or product packaging—to indicate that the product is covered by one or more issued patents. The practice is guided by 35 U.S.C. § 287, a statute that spells out when and how a patent owner must mark products to preserve the right to collect certain types of damages in an infringement lawsuit.
We’ll get into the basics of U.S. patent marking, explain how it works, and show why it’s an important consideration for any patent holder who manufactures or sells products in the United States.
1. The Legal Framework: 35 U.S.C. § 287
Under 35 U.S.C. § 287(a), a patent owner who sells (or authorizes others to sell) a product covered by a U.S. patent is encouraged to mark the item (or its packaging) with:
- The word “Patent” or the abbreviation “Pat.” Followed by the U.S. patent number (or numbers) covering the product OR
- ‘by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent’.
The putative purpose of marking is that properly marked products put the public on “constructive notice” of the patent. Notice has significant impact on damages for patent infringement.
2. The Mechanics of Marking
Physical Marking
Historically, the standard approach has been to physically mark the product itself. Many companies do this by molding “Pat. 1234567” or “Patent No. 8,765,432” onto the item or adding a stamped plate if the item is too small or delicate. If direct marking is infeasible or would damage the product (e.g., fine jewelry, certain electronics), you can place the patent notice on the packaging instead.
Virtual Marking
An alternative introduced under the Leahy-Smith America Invents Act (AIA) is virtual marking. Rather than listing patent numbers directly on the product, you can mark the product (or packaging) with a URL—for example, “Patented: www.example.com/patents”—where you maintain an up-to-date list of relevant patent numbers.
Advantages of Virtual Marking:
- Flexibility: If your patent numbers change (e.g., you receive new patents or older patents expire), you can update your website in real time.
- Cost-Effective: You don’t have to re-tool your product molds or reprint large quantities of packaging each time there’s a change.
- Easy Accessibility: In theory, the public can quickly check current patent coverage by visiting your website.
However, if you adopt virtual marking, make sure your online list is accurate—inaccurate or stale information can lead to complications or, in the worst case, false marking issues (discussed below).
3. Common Pitfalls and Best Practices
3.1 Overlooking Marking Requirements
If you don’t mark a product, the impact can be significant. Inventors and companies with patents should implement a consistent marking policy, regularly make sure that products and packaging are marked correctly, and the markings are kept current.
3.2 False Marking
False marking refers to labeling a product with the word “patent” (or similar) when no patent covers that product. Under 35 U.S.C. § 292, it used to be possible for almost anyone (a “qui tam” relator) to sue for false marking, creating a flurry of lawsuits over trivial mismarkings. It was a bit of a cottage industry, often veering into “gotcha” territory (where an innocent small error leads to litigation and big legal bills). Since then, the law has changed as that only a competitor who suffers a competitive injury can bring suit, and they must prove damages. The United States may also fine a person $500 for every false marking. Nevertheless, repeated or deliberate mismarking (or continuing to mark an expired patent) can lead to legal headaches and possible fines.
It is interesting that “marking of a product … with matter relating to a patent that covered that product but has expired is not a violation of this section.” Perhaps more interesting is what happens when a patent is — well, let’s call it “Schrodinger’s Marking” — in two states at once. That is, an administrative proceeding like an IPR has been instituted, meaning that there is a “reasonable likelihood” that at least one patent claim is invalid. The patent is still technically valid, but is at risk. Let’s move even deeper into quantum patent territory: Imagine a patent with only two claims. The first claim is held invalid in a federal court proceeding while the second claim is held valid — and the loser on each ground appeals. Now if I mark a product with the patent number, a person looking up that patent will think that the full patent as issued covers the product (let’s assume that the person isn’t enough of a patent expert to know to check for notices of judicial proceedings or to search PACER). The inventor is expressly permitted to mark under federal law, but in marking will inevitably mislead a consumer into thinking the full patent covers the item. Yes, I know that this is a rare situation and not truly germane to the article, but I promised myself I’d use the term “Schrodinger’s Patent” at some point in my life. One ✔️ on my list of odd things to do.
Best Practices to Avoid False Marking:
- Remove expired patent numbers within a reasonable timeframe.
- Confirm your product actually embodies the claims of the patent before marking.
- If you’re not sure whether a patent covers the product, consult with a patent attorney or conduct an internal claim mapping review.
Avoiding false marking is easier said than done in some cases. The typical defense in a patent infringement case is “I didn’t infringe”. Part of getting to that defense is going through a Markman Hearing, which is a proceeding where a federal judge translates the patent claims into plain English. It can take millions of dollars and a handful of expert witnesses to get a jury to make a determination as to whether the patent claim reads on the product. You just have to do your best, but know that the mere presence of a patent number on a product is not a guarantee that the product actually uses the patented technology. I’m not suggesting that you ignore the marking — in fact, do the opposite. Take it seriously and get an opinion from a lawyer as to the risk (juries are unpredictable so don’t expect a guarantee).
3.3 Incomplete or Vague Markings
If your product is covered by multiple patents, it’s best to either list all relevant patents or use a “virtual marking” approach that points the public to a webpage containing the complete list. Simply saying “Pat. Pending” won’t help you for already-issued patents, and it certainly won’t provide constructive notice for damages when the patents do issue.
3.4 Special Cases: Methods and Software
Method Claims: Marking generally applies to tangible items. If your patent covers a process (method claim) but no physical product results from that process, you can’t really “mark” it.
Software: If your patent covers software that can be downloaded, consider marking splash screens, “About” pages, or disclaimers on associated physical packaging. Alternatively, you might display a notice during installation or login that references the relevant patent number(s).
3.5 Automated Marking
Here’s an interesting business concept: Automated Virtual Marking. You create a dynamic web page with a back end that regularly checks patent status and removes patents from the list as they expire.
4. Why Patent Marking Matters
- Maximizing Damages: Proper marking helps with damage determinations in an infringement suit.
- Deter Would-Be Infringers: Seeing a clear “Patent” marking or link to active patents can discourage potential copycats.
- Professionalism and Transparency: Marking signals that you take IP rights seriously, potentially helping your licensing discussions or investor pitches.
- Norm Compliance: In certain industries (e.g., medical devices, consumer electronics), robust marking is practically an industry norm and can influence commercial relationships.
Conclusion
Patent marking might feel like a detail in the grand scheme of intellectual property strategy, and to be honest if you were going to make a mistake, a mistake in marking is less damaging than other mistakes (like writing a claim badly or engaging in misconduct during patent prosecution. However, an otherwise strong patent is undermined if the patent holder didn’t follow marking requirements.