Patent marking

The statute says patentees, and persons making, offering for sale or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the article is patented in one of these ways¹:

• Physical marking. Fixing on the article the word 'patent' or the abbreviation 'pat.', together with the number of the patent¹.
• Virtual marking. Fixing on the article 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 patent¹.
• Label on the article or package. Where, from the character of the article, neither can be done, fixing to the article, or to the package wherein one or more of them is contained, a label containing a like notice¹.

The USPTO's September 2014 Report on Virtual Marking says that the 2011 America Invents Act added virtual marking as an alternative to physical marking, and that Congress intended it to save costs for manufacturers and to facilitate effective marking of small products³. The report concluded that virtual marking had likely met its intended objectives of reducing manufacturing costs, facilitating marking of small articles and improving public access to patent information. It also noted limits, including reliance on the Internet and a lack of clear guidance on how patents and products are to be associated on the web page³.

Where the patentee, or a person making, offering for sale, selling or importing a patented article for or under it, fails to mark, no damages are recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter. In that case damages may be recovered only for infringement occurring after the notice, and the filing of an action for infringement constitutes such notice (35 U.S.C. 287(a))¹. The Supreme Court held, under the predecessor marking statute, that a patentee who had not made or sold the patented article was not barred from recovering damages for infringement before actual notice (Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 297 U.S. 387 (1936))⁴. The Federal Circuit has held that the marking requirement of 35 U.S.C. 287(a) does not apply when only method claims are asserted (Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., No. 2008-1284 (Fed. Cir. Mar. 17, 2009))⁶. The statute speaks of notice of the infringement. This page does not cover what courts require of a notice.

The USPTO report describes the purpose of marking as providing constructive notice to the public that an article is patented, and says that failing to mark appropriately can preclude recovery of damages until effective notice is given³. It states that where an article is already on the market and a patent covering it later issues, the patentee is required to update the mark to identify the patent number of each newly issued patent³. The report also says the courts have held that, for physical marking, full compliance was not achieved until the patentee consistently marked substantially all of its patented products, and that this 'substantially consistent and continuous' requirement appears to apply to virtual marking too³.

The Paris Convention says that no indication or mention of the patent shall be required upon the goods as a condition of recognition of the right to protection (Article 5D)⁵. The US rule above does not make marking a condition of the patent right. It limits the damages that can be recovered¹.

Section 292(a) covers three kinds of conduct²:

• Marking upon, affixing to, or using in advertising in connection with anything made, used, offered for sale, sold or imported, without the patentee's consent, the patentee's name or an imitation of it, the patent number, or the words 'patent', 'patentee' or the like, with the intent of counterfeiting or imitating the patentee's mark, or of deceiving the public and inducing them to believe the thing was made, offered for sale, sold or imported by or with the consent of the patentee².
• Marking upon, affixing to, or using in advertising in connection with an unpatented article the word 'patent' or any word or number importing that it is patented, for the purpose of deceiving the public².
• Marking or advertising an article with the words 'patent applied for', 'patent pending' or any word importing that an application has been made, when no application has been made or, if made, it is not pending, for the purpose of deceiving the public².

The penalty is a fine of not more than $500 for every such offense, and only the United States may sue for it (35 U.S.C. 292(a))². A person who has suffered a competitive injury as a result of a violation may file a civil action in a district court for recovery of damages adequate to compensate for the injury (35 U.S.C. 292(b))². Marking a product with matter relating to a patent that covered that product but has expired is not a violation (35 U.S.C. 292(c))².

Section 16(b) of the America Invents Act made these changes to section 292. Before it, subsection (b) let any person sue for the penalty, with one half going to the person suing and the other to the United States. The amendments apply to all cases pending on, or commenced on or after, 16 September 2011².