Understanding Patent Markings

Have you ever seen a patent notice like “U.S. Patent Pending” or “U.S. Patent No. 1234567” and wondered about its implications?  Could it be used to scare off potential competitors, or does it have some deeper legal importance?  Under federal law, which governs all things patent, patent marking actually plays an important role in patent infringement suits.  This article reviews the reasons for marking a product with a patent, the kinds of markings that are legally sufficient under the law, and the practical implications for patent owners and possible infringers alike.

Is a Patent Marking Legally Relevant?

A patent marking is legally relevant.  Not just a deterrent, it serves to provide constructive notice to a potential infringer that the item is patented or patent pending.  This means that the law imputes notice to an infringer, even if the infringer never actually saw the patent marking.  Notice of some kind is required under United States Code, Title 35, section 287 before a patent holder may bring an infringement action.  There are two kinds of notice: actual and constructive.  Actual notice occurs when someone tells an infringer about their infringement, like, for instance, when a patent holder sends a demand letter.  Constructive notice occurs when a patent holder properly marks their patented product.  If infringement occurs after either of these events, the infringement is actionable in federal court.

Does an Infringer Have to See a Patent Marking?

No.  Constructive notice achieved by a patent marking is a legal fiction.  The idea is that because a person could be aware of infringement based upon the marking, then the infringer in fact is aware for legal purposes.  This is why patent searches are so important–they are the due diligence necessary to reduce the risk of patent infringement–a serious civil wrong that can incur significant liability.

What is a Proper Patent Marking?

A proper patent marking simply says “U.S. Pat. No.” followed by the actual patent covering the product.

Where Should a Patent Marking be Located?

The patent marking must be directly on the product, unless it is physically impracticable to do so.  Physical impracticability is a very limited exception focused only on the space available on the product–not expense or other factors.  In the case of physical impractibility, the patent marking can go on a label or on the packaging of the product.

What is a Virtual Marking?

A virtual patent marking is an internet address placed on a product in lieu of a traditional marking.  The America Invents Act, a relatively new law in the patent field, permits this kind of marking.  The benefit of a virtual marking is that it permits a patent holder to update the patent marking without going through the expense of changing their production system.  This is particularly valuable for products made through expensive molds or dies.

Does “Patent Pending” Mean Anything?

Yes.  That marking can also establish liability, if the patent actually issue and if other conditions are true.

These are just some of the issues with patent marking, a significant intellectual property issue your business should keep in mind as it brings new products to market.