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August 29, 2012

America Invents Act Impacts Patent Marking Requirement

The recently-enacted Leahy-Smith America Invents Act ("the AIA") expands how patent owners may mark their products.

In order to recover damages for patent infringement that occur prior to the commencement of a lawsuit, a patent owner must (1) provide actual notice of the patent to the accused infringer, or (2) provide "constructive notice" by marking products covered by the patent with the word "patent" or the abbreviation "pat.," together with the patent number. If this cannot easily be done, notice may be given by fixing to the product or to its packaging, a label containing a similar notice.

However, sometimes, the covered product is too small to mark with all of the patents that cover the product. It is also difficult, as in the case of large patent portfolios, to keep track of all of the patents that cover a product or that have issued since a product's introduction. In addition, it is often difficult to monitor when patent coverage changes or patents expire. Moreover, it is often prohibitively expensive to modify molds, packaging, printing, etc. to reflect such changes.

Under the AIA, an alternative form of "virtual marking" is now in permissible. A covered product may be marked with "pat." or "patent" and a free-to-access web address that associates the product with the appropriate patent number(s). The webpage at the web address must identify a covered product by one or more patent numbers. When the patent list needs to be modified, the web page can be easily modified. Though not required, it is prudent to maintain records of any changes to the patent list to corroborate the date when constructive notice for a particular product and patent is given.

The "virtual marking" provision makes it easier for patent owners to manage patents affecting their particular articles. However, it is important to note that the patent owner cannot charge for accessing the webpage that contains the list of patents. Thus, patent owners should work carefully with their IT departments to ensure that the webpage is located on a publicly-accessible part of their website.

Actual or virtual marking is only required to provide constructive notice. Some patent owners may forego notice and simply wait until an infringement comes to their attention and then give actual notice. Such patent owners intentionally choose to not mark their products with patent numbers because the identification gives potential infringers valuable information about what patents to avoid. Comprehensive patent marking could give a competitor a virtual road map of potential patent pitfalls.

Prior to the AIA, any third-party (not only potential infringers or competitors) could sue a patentee for false marking; that is marking a product with an expired or invalid patent number. Unfortunately, many plaintiffs were taking advantage of this law and suing companies for false patent marking. Under the AIA, only the United States or someone with a competitive injury is now permitted to sue a patentee for false marking. In addition, the AIA clarifies that marking a product with an expired patent is not a violation of the false marking statute. These recent enactments have significantly reduced the volume of pending false patent marking lawsuits

In summary, patent owners have now been provided with updated options in choosing how to mark their covered products. If they mark their products, patent owners may either use actual marking or virtual, web-based marking. In addition, the AIA has now limited actions for falsely marking products to those commenced by the United States or those injured competitively.

For more information. Please contact either of the Co-Chairs of the Patents & Prosecution practice area, Peter Bilinksi at (315) 425-2856 or or Thomas FitzGerald at (585) 295-4469 or


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