1. Patent Marking and Infringement
2. Providing Notice for Patent Marking 
3. How to Mark Products

Patent marking is the inclusion of markings and labels like “Pat. 9,000,500” or “Pat. Pending” that are placed on products to notify competitors and customers that the products are patented or in the process of receiving a patent. If a person or company doesn't follow patent marking and notice requirements, they can face serious legal problems and put their product at risk.

According to federal law, a person who owns a patent but doesn't follow patent marking isn't allowed to recover any damages from before they were in compliance. However, once they mark their patents appropriately, they can recover damages for infringement going forward.

This happened when the Philips Electronics Corporation took legal action against other manufacturers for infringing on its patents on household appliance remote controls. However, Philips didn't mark its patent on the remote control or provide adequate notice, so the court didn't allow the company to recover any monetary damages from infringing sales over the previous three years.

It can be a long and overwhelming process for patent owners to consistently mark their products to protect against infringement and damages. However, marking is made easier with the Leahy-Smith America Invents Act, which allows for virtual marking.

Patent Marking and Infringement

According to federal law, a patent owner can only collect damages from patent infringement if they give adequate notice of the patent. If a court finds that infringement did occur, they can grant the patent holder damages from up to six years before the date of the lawsuit. However, that can only happen if the infringer knew about the patent or the patent was marked on the product. 

Damages can't be awarded if the infringer wasn't aware they were actually infringing on anything. In many cases, damages are given because the product was marked by the patent holder, not because the infringer was made aware of the patent.

Providing Notice for Patent Marking 

Patent owners don't have to actually mark their products to be eligible to receive infringement damages. The law gives patent owners two ways to provide notice: actual or constructive.

If an infringer is directly told that their product infringes on an existing patent, it is considered actual notice. In many cases, actual notice means filing an action for infringement. Actual notice can also involve telling the infringer about the issue and what the patent holder believes is infringement and proposing a solution to lessen the problem, such as by offering a licensing deal.

If a patent owner hasn't marked their product but still wants to stop an alleged infringer, they should notify the infringer with a letter that includes the following:

  • The patent number being infringed
  • The products that are being infringed
  • A request to stop infringing or an offer of a license

Once the letter has been sent, the patent holder can receive damages going forward.

If a product is labeled with the word “patent” or the abbreviation “pat.” and the patent number, it is considered constructive notice. The America Invents Act allows patent holders to use virtual marking for constructive notice. If “patent” or “pat.” appears on the product with a web address that links to the patent number, it is acceptable as virtual marking.

Every product released to the public should be marked and must be legible and evident. Markings can't be hidden or impossible to read. Patents, copyrights, and trademarks have their own marking requirements. Copyright requirements are published in Copyright Notice Circular 3. Trademark requirements are defined in Trademark Manual of Examining Procedure Section 906.

How to Mark Products

Although there are options for marking, the best option is to mark each product with the patent number or a link to the virtual marking website.

However, there are also legal options for marking a product that can't be physically marked. Markings can be placed on a product's packaging if the product itself is too small or it would be to expensive to mark the actual object. That doesn't mean that patent holders should mark the packaging just because it is more convenient than marking the product. The legal language is strict and states that package marking is only acceptable if marking the product itself cannot be done.

If you need help with patent marking, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.