This document discusses patent marking requirements and options for virtual patent marking. It covers who must mark patented products, what should be marked, when marking must commence, and how marking can be done conventionally or virtually. Virtual marking allows listing patents on a publicly accessible website instead of directly on products when appropriate. The document provides examples of virtual marking websites and considerations for implementing a virtual marking program. It cautions that international requirements may differ from US law.

1. Virtual Patent Marking
Joel Lutzker
General Counsel
March 27, 2013

2. Topics
• Why Mark?
• Who Must Mark?
• What to Mark?
• When to Mark?
• How to Mark?
• Virtual Marking Primer
• Questions
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3. Why Mark?
• 35 U.S.C. 287(a):
“In the event of failure so to mark, no
damages shall be recovered by the
patentee in any action for
infringement, except on proof that the
infringer was notified of the infringement
and continued to infringe thereafter, in which
event damages may be recovered only for
infringement occurring after such notice. “
• Failure to mark deprives patent owner of
ability to collect damages for pre-notice
infringement.
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4. Who Must Mark?
• 35 U.S.C. 287(a):
“Patentees, and persons making, offering for
sale, or selling within the United States any
patented article for or under them, or
importing any patented article into the United
States ….”
• Patentees and licensees (including under
covenants-not-to sue) must mark
• Failure to include marking obligation in
license agreements is a common problem
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5. What to Mark?
• 35 U.S.C. 287(a):
“any patented article … or when, from the
character of the article, this can not be
done, by fixing to it, or to the package
wherein one or more of them is contained, a
label containing a like notice.”
• Preferably affixed to the patented
product
• Alternatively to a label or package
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6. What to Mark?
• Courts have generally taken a flexible
approach in determining whether marking
on packaging or a label is permissible
alternative to marking on product
• Factors considered include:
• Size of product
• Cost of marking
• Industry custom
• Aesthetics
• Whether there are other markings on the product
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7. What to Mark?
• Marking must be applied to complete
patented product
• Also must be applied to components
having no substantial use except for
assembly into complete patented product
See, Amsted Industries, Inc. v. Buckeye Steel
Castings Co., 23 F.3d 374 (Fed. Cir. 1994)
(failure to mark center plate component
suitable only for use in complete patented
railroad car frame resulted in denial of pre-
notice damages)
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8. When to Mark?
• Marking must commence on products sold
after patent issuance
• Marking must be substantially continuous
• No marking required for pure process
patents
• Marking is required for patents containing
both product and process claims (failure to
mark product will result in denial of pre-
notice damages even for process claims)
See, American Medical Systems, Inc. v.
Medical Engineering Corp., 6 F.3d 1523
(Fed. Cir. 1993)
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9. How to Mark
• Conventional marking
35 U.S.C. 287(a):
“by fixing thereon the word “patent” or the
abbreviation “pat.”, together with the
number of the patent”
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10. How to Mark
• Conventional marking has significant
shortcomings
• Difficulty in listing large number of patents
• Difficulty in updating (newly issued or
expired patents)
• Expense (tooling, labeling)
• Inventory control
• Aesthetics
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11. How to Mark
• America Invents Act amended to Section
287(a) to authorize virtual marking:
“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”
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12. Virtual Marking Website Examples
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13. Virtual Marking Primer
• Website may be
internally developed
and maintained or
maintained through an
outside vendor, e.g.
www.patentmarking.co
m
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14. Virtual Marking Primer
• In-house or outside factors to consider
• Size of portfolio
• Velocity of portfolio
• Availability of internal resources
• Ability of IT system to track availability and
versions
• Ease of proof
• Budget
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15. Virtual Marking Primer
• Website features
• Unique landing page for patent marking
data, e.g. www.company.com/patents or
www.patentmarking.com/company
• May be unique landing page for each
product, but most companies have adopted
a single landing page with a list of products
and patents
• Landing page may link to pdf files for each
product (may be subject to attack)
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16. Virtual Marking Primer
• Elements of proof
• Availability of site
• Maintenance of data
• What patents listed
• When listings changed
• Security of site
• Records of access (not required but may
help in proving willfulness)
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17. Virtual Marking Primer
• Marking on product, label or packaging
must comply with the
statute, i.e., “patent” or “pat.” followed by
url
• url alone will not suffice. See, A to Z
Machining Services, LLC v. National
Storm Shelter, LLC, 2011 WL 6888543
(W.D. Ok. 2011)
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18. Virtual Marking Primer
• International issues
Virtual marking may not comply with marking
provisions of foreign jurisdictions and may
give rise to innocent infringement defense
and denial of damages, e.g.:
• Australia
• United Kingdom
• Ireland
• Others?
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19. Virtual Patent Marking
• QUESTIONS OR COMMENTS?
Joel Lutzker
Ocean Tomo, LLC
jlutzker@oceantomo.com
203.542.7219
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