Patent marking software fulfills the patent marking statutory requirements allowing someone to collect damages in the case of infringement. Second, it mitigates the constant risk people face from others who are attempting to copy proprietary products.

Patent Marking

When trying to protect your intellectual property, securing a patent is only the beginning. Under patent law, the patent holder may be able to recover infringement damages for up to six years before filing an action in court. However, recovery is only an option if the infringement took place from the date the patent holder gave the infringer notice of their crime.

According to patent law, marking patented products constitutes notice to the public. As such, if a marked product is infringed upon, calculate recovery from the time the product was available to the market, not the time the patent holder gave notice to the infringer.

This is why, if you plan on enforcing your patent, you need to mark it in order to provide notice to potential infringers. You'll also want to mark the product with patent numbers covering every component of the product.

Patent owners must ensure all licensees are also marking their products. Substantial compliance through the marking statute may be sufficient, according to the courts.

For example, in the case of Maxwell v. J. Baker Inc, the federal circuit court ruled that a patent owner complied with the marking statute since 95% of the products sold were marked and the product owner notified licensees of their need to mark. It is the patent owner's responsibility to monitor licensees and ensure they are marking your products accordingly.

Patent Marking Guidelines

Prior court decisions offer certain guidelines on how to mark patented products:

  • Place a label on the product. It is not enough to market the product as patented. It must also be marked.
  • You may only use the label "Patent Pending" if you've filed a patent application. You may not use this marking if you intend to file but have not. That would fall under "false marking," and subject you to fines.
  • If there's a reason why the product can't be marked i.e., it's too small or it would place an undue burden on the manufacturers, then it is acceptable to mark the product's packaging.
  • Markings must always be legible. If a consumer needs to use a magnifying glass to read the patent marking, it is insufficiently marked and does not meet the requirements as they are.
  • Consider that patents are only valid in the countries they are issued. If you want to patent your product in other countries, you'll need to learn how to mark your products according to their standards before exporting.
  • Software needs to be marked. You may want to indicate the patent during startup or include it in the documentation of the software. Be sure to include the patent marking within the links if the software is internet-based. Software patents typically have a combination of device claims and method claims.
  • Create a webpage on your company website for all your legal notices. This should include any pertinent copyright, patent, or trademark information. Be sure to keep this webpage up to date at all times.

If you are making a method claim, there won't be any marking requirements, since there's nothing tangible to be marked. However, you can still annotate your patent by displaying "For Use Under US Pat. 7,000,000" somewhere on your website.

Design patents also require marking in order to receive the full scope of available remedies upon infringement.

False Markings

Falsely marking a product can have financial and legal repercussions. United States Patent law prohibits the following false markings:

  • Counterfeit marking - Using a patent without the owner's permission
  • False patent marking - Placing patent marking on an unpatented product
  • False patent pending marking - Using terms like "patent pending" when an application has not been submitted

Certainly, there are products out there today with expired patents. However, you do not want to fall into this practice. It could lead to an accusation of false marking and lead to several fines.

If you need help with patent marking software, 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, Stripe, and Twilio.