Virtual Patent Marking — An Underutilized Tool

In September, the US Patent and Trademark Office released a report to Congress describing the progress (and underutilization) of virtual patent marking in the three years since it first became available under the America Invents Act. The report was directed to analyzing: (1) the effectiveness of "virtual marking" as an alternative to the physical marking of articles; (2) whether such virtual marking has limited or improved the ability of the general public to access information about patents; (3) the legal issues, if any, that arise from such virtual marking; and (4) the deficiencies, if any, of such virtual marking.1

On the basis of nine public comments and the USPTO's independent research, the report concluded that "virtual marking has likely met its intended objectives of reducing manufacturing costs, facilitating marking of small articles, and improving the general public's access to patent information. However, it could be beneficial to revisit the issue at a later date, to account for further user experiences, additional data, and case law developments."2

According to the report, virtual marking has significant promise as a tool for patentees and the general public, but that it appears to be underutilized, in part because further legislative and judicial guidance is necessary to ensure that applicable statutes are not violated through attempts to virtually mark.

Patent Marking, False Marking and the Basics of Virtual Marking

Under the patent marking statute, 35 U.S.C. § 287(a), there are two ways to provide notice: actual and constructive. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice can be achieved by affixing a product with, for example, the word "patent" or abbreviation "pat." along with the patent number. If a patented product is not marked with the patent number, damages for infringement will be limited to the time period after the patentee gives actual notice to an alleged infringer. To recover damages under the marking statute, the patentee's marking must be "substantially consistent and continuous."3 Generally speaking, a patentee fails to meet this standard if it doesn't mark some of the manufactured articles covered by the patent or stops marking such articles altogether for some period of time.

When enacted, the AIA introduced a new method for patent marking whereby products can be marked virtually rather than physically. Instead of printing the actual patent number on the product, patentees can display the term "patent" or "pat." along with an accompanying URL address of a Web...