How do you fare at marking time? Recent changes to patent marking in the US

It is relatively commonplace to mark patented articles with a generic statement to the affect that there is patent protection sought or applied for in respect of that article. In some instances, specific reference may be made to one or more of the patents concerned. This form of marking is used in an attempt to avoid having to engage in the relatively expensive and time-consuming practice of changing moulds or packaging as new patents are obtained or old patents expire. There can be, however, a question about the effectiveness of this generic marking.

Although it is not compulsory to mark patented articles, failure to appropriately mark a patented article may adversely affect any claims for damages against an infringer. That is, damages for patent infringement do not accrue unless an infringer has been given notice by a patentee. Patent marking is a convenient means of providing constructive notice to the public. In this regard, companies generally make use of specific moulds, name plates, labels and the like to mark articles or their packaging during manufacturing processes.

Not only is patent marking good practice, but in jurisdictions such as the US where the size of the market can be substantial and treble damages are available, it is important to be in the best position to be awarded damages.

But what happens when the applicability of one or more patents to an article changes or patents expire?

Typically, changes to the marking of patented articles require companies to change their manufacturing processes, for example, by changing moulds or packaging. There is also a need for companies to consider existing articles that have already been marked. However, recent changes to US provisions under the America Invents Act (AIA) now permit the use of “virtual marking”.

What is virtual marking?

The “virtual marking” provision allows patented articles to be marked with the word “patent” or “pat.” together with a reference to a website that is freely accessible by the public and associates the patented article with the relevant patent number or numbers.

Accordingly, companies can now mark patented articles with a single website during manufacturing processes and subsequently update the website with any necessary changes. Of course, it remains critical to keep the website updated. Moreover, it is not clear if this form of marking will be recognised in jurisdictions other than the US.

Other changes to patent marking provisions

Under the AIA, false marking provisions were also affected. In particular, only the US government may bring an action for false marking, unless a party can establish that they suffered a competitive injury.

Additionally, changes to the false marking provisions means that an article marked with an expired patent number that was once applicable to the article is no longer a violation.

There are a variety of marking options, and the one, or combination, selected for any given article will be determined by the nature of the article or the processes used to produce and/or distribute the article. This recent development makes available a further option that we suspect will become increasingly widespread and acceptable in more countries over the coming years.