Marking Requirement

United States patent law has a provision, §287(a), that requires a patent owner or licensee to mark goods with applicable patents. The requirement is fulfilled by marking the product with the word patent or an abbreviation (e.g., U.S. Pat.) and the patent number, or alternately a url pointing to a webpage on which the patents are listed. If it is not feasible to mark the product, the packaging can be marked. Failure to comply with the marking requirement reduces the remedies available to the patent holder, and in particular can preclude the recovery of damages for patent infringement for activities before an infringement case is filed or to those arising subsequent to an explicit warning letter.

Marking many products, particularly small components such as microchips, or transparent items such as lenses can raise many practical issues, while requiring non-end-user customers to include patent notices in the final product may also be very difficult. The problem has been eased by the amendment to the marking requirement in the America Invents Act, that modified the marking statute to provide that it may be satisfied:

“by fixing thereon the word ‘patent’ or the abbreviation ‘pat’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent.”

Marking is not required for a product that practices a patented method provided the patent included only method claims; if the patent does include device or system claims then it should be marked. In the past, because of the risk of false marking claims marking a method patent number presented a significant liability risk, but since the amendment of the false marking statute to limit troll activity, it is now advisable to mark relevant methods claims on products as a deterrent and to bring the method patent to a potential infringer’s attention.

See Symbol with respect to Copyrights and Trademarks.