By Jeffrey C. Norris, Partner, Standley Law Group LLP

Patent owners are required to provide notice to an infringer under 35 U.S.C. § 287 in order to be able to collect damages for infringement. Failure to provide proper notice of the patent rights can prevent the recovery of damages, which could be costly. Damages are only available to compensate for infringement that occurs after effective notice has been given to the infringer.

Effective notice to an infringer may be either actual or constructive. Actual notice consists of directly contacting the infringer to provide notice of the infringement. While actual notice is effective, there is necessarily a period of infringement prior to the notice for which damages may not be recovered. Constructive notice may eliminate that lag time by automatically providing notice to the public that an article is patented. According to case law, the constructive notice must be “substantially consistent and continuous” in order to ensure that the public is adequately informed of the patent rights. When there is effective constructive notice prior to the infringement, damages will be available once the infringement takes place.

Traditionally, a primary example of effective constructive notice requires the patented articles to be physically marked with the word “patent” or “pat.” and the appropriate patent number. This traditional method of patent marking may be cumbersome and costly to implement such as when a new patent is issued or a new variation of the article is introduced. Small articles may also be particularly difficult to physically mark. In view of such limitations with physical marking, the America Invents Act amended 35 U.S.C. § 287 to establish the option of virtual patent marking as an alternative to physical marking.

Virtual patent marking takes advantage of the web as a means for doing business. In particular, virtual patent marking allows for constructive notice to be provided by fixing on the patented articles the word “patent” or “pat.” and the address of a posting on the internet, where the patented article is associated with the applicable patent(s). The posting on the internet must be freely accessible by the public. An example of a best practice may be to provide a web page that is dedicated to the patent information, wherein the address directly to that web page is fixed on the patented articles. The patented articles should be clearly identified in the posting, such as by brand name and model number, wherein the applicable patents can then be clearly associated with each type of patented article. Notice regarding published patent applications may likewise be provided.

Virtual patent marking is intended to be a flexible and dynamic option that enables regular and timely updates to the patent information. For example, the patent information may be updated to reflect changes in patent status or article offerings. The ease of updating the patent information may reduce the costs for manufacturers to provide notice of patented articles. In particular, since virtual patent marking does not require modification of tooling or manufacturing processes to reflect new patent information, virtual patent marking may be an easier and more cost effective way to provide effective notice. In addition, virtual patent marking may facilitate effective marking of small articles, particularly when multiple patents are involved. Thus, while virtual patent marking is a relatively new procedure, it may be an effective alternative to physical marking for providing constructive notice of patent rights.

If you have any questions about virtual patent marking, make sure to seek the advice of your patent attorney.