Key Takeaways

  • Patent marking informs the public of patent rights and is a prerequisite to collecting damages for infringement.
  • Virtual marking offers a flexible and cost-effective alternative to traditional physical marking.
  • Software-based patent marking poses unique challenges, especially in identifying “articles” for intangible products.
  • False marking can lead to significant penalties; businesses must avoid overly broad or outdated claims.
  • Patent marking software tools streamline compliance by automating updates, linking products to patents, and managing virtual marking websites.
  • Best practices include timely updates, cross-functional collaboration, and regular audits of patent lists.

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.

Virtual Marking and Software Integration

Virtual patent marking has become increasingly popular, especially for companies that frequently update their products. Instead of physically updating the product or packaging, businesses can list patents on a dedicated webpage and refer to that URL on the product.

This approach offers several advantages:

  • Reduces costs and delays tied to packaging changes.
  • Easily accommodates patent updates or additions.
  • Enables scalable compliance for complex product portfolios.

However, virtual marking must be executed correctly to be legally effective:

  • The web page must be publicly accessible.
  • The URL must be legibly printed on the product.
  • The webpage must clearly associate each product with its relevant patents.

Patent marking software plays a key role here by automating and managing these processes.

The Purpose of Patent Marking

Patent marking serves as public notice that a product is protected by one or more patents. This notice helps deter potential infringers and is a critical component in recovering damages for patent infringement under 35 U.S.C. § 287(a). Without proper marking, a patent holder may be unable to collect damages until the infringer receives actual notice of the infringement.

Marking can be done in two primary ways:

  • Physical Marking: Imprinting “Patented” along with the patent number on the product.
  • Virtual Marking: Using a web address on the product that links to a webpage listing the associated patents.

Proper marking creates a rebuttable presumption that an alleged infringer had notice of the patent, thus strengthening a patent owner's legal position.

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.

Software Patent Marking Challenges

For software-based patents, identifying the "patented article" can be ambiguous, as there may be no physical product to mark. Companies must consider how to effectively communicate patent coverage when dealing with digital platforms, apps, or cloud services.

Challenges include:

  • Determining what constitutes an “article” for software claims.
  • Deciding where and how to display the patent notice (e.g., splash screens, about pages, user interfaces).
  • Avoiding false marking for features that may no longer be covered.

Legal counsel can assist in determining the most appropriate marking strategy based on the nature of the software and the scope of the patent claims.

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.

Best Practices for Implementing Patent Marking Software

To maximize the effectiveness of patent marking software, companies should follow these best practices:

  1. Collaborate Across Teams: Ensure coordination between legal, engineering, and product development departments.
  2. Perform Regular Audits: Review marking records periodically to catch and correct discrepancies.
  3. Maintain Clear Associations: Ensure each product is accurately linked to its applicable patents.
  4. Train Internal Stakeholders: Educate relevant employees on the importance and use of the software.
  5. Track Regulatory Changes: Stay informed on any updates to marking laws or case interpretations.

Proper implementation helps ensure sustained compliance, reduces liability, and strengthens enforcement rights.

Benefits of Patent Marking Software

Patent marking software helps businesses streamline compliance by managing patent-product associations and supporting virtual marking efforts. These tools offer several benefits:

  • Automated Updates: Keep product-to-patent listings current with patent grants and expirations.
  • Centralized Dashboard: View, manage, and audit marking information across departments.
  • Virtual Marking Compliance: Easily generate a web page that satisfies § 287(a) requirements.
  • Integration Capabilities: Link with product lifecycle management (PLM) or IP docketing systems.

These features reduce administrative burdens and minimize legal risk, especially for companies with broad patent portfolios or frequently evolving product lines.

Consequences of False Marking

False marking—labeling a product with an inaccurate or expired patent number—can result in legal consequences. Under 35 U.S.C. § 292, anyone may bring a qui tam action against a company that marks products with intent to deceive the public.

Key points:

  • Marking with expired or unrelated patents can expose a company to liability.
  • Intent to deceive must generally be proven for penalties to apply.
  • Penalties can be assessed per falsely marked item, leading to substantial damages.

Companies should regularly review and update their patent lists and rely on tracking tools to avoid unintentional false marking.

Frequently Asked Questions

  1. What is the purpose of patent marking?
    Patent marking serves to notify the public of patent protection and is required to recover damages for infringement unless actual notice is provided.
  2. What is virtual patent marking?
    Virtual marking involves printing a URL on the product that links to a website listing applicable patents, providing a flexible and cost-effective compliance method.
  3. Is software patent marking required?
    While not legally required, marking software-related products helps establish constructive notice and can be done through virtual means like online documentation or splash screens.
  4. What are the risks of false patent marking?
    False marking can lead to significant penalties under U.S. law, especially if it can be shown the mislabeling was done with intent to deceive.
  5. How does patent marking software help?
    It automates and centralizes the process of associating patents with products, helping companies maintain accurate virtual marking pages and avoid compliance errors.

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