Patented product

Whether a product is covered depends on the patent's claims. See Patent claim. In Europe, the extent of the protection conferred by a European patent is determined by the claims, and the description and drawings are used to interpret them (Article 69(1) EPC)². In China, for an invention or utility model patent the scope of protection is confined to the content of the claims (Patent Law, Article 64)³.

In the US, except as otherwise provided in Title 35, whoever without authority makes, uses, offers to sell or sells a patented invention within the US, or imports it into the US, during the term of the patent infringes the patent (35 U.S.C. 271(a))¹. Because protection lasts for a limited period, see Patent expiration.

A patented product is not automatically free to sell. The USPTO notes that an invention may be able to be patented but might also be covered by a prior unexpired patent, since a patent does not grant the right to use an invention⁷. See Freedom to operate.

The rules below are those of the United States. This page does not cover marking rules in other countries.

Patentees, and persons making, offering for sale or selling within the US a patented article for or under them, or importing one into the US, may give notice to the public that the article is patented (35 U.S.C. 287(a))⁵. The statute describes three ways of doing so⁵:

• fixing on the article the word "patent" or the abbreviation "pat." together with the number of the patent, which is physical marking⁵;
• fixing on the article the word "patent" or "pat." together with an address of a posting on the Internet, accessible to the public without charge, that associates the patented article with the number of the patent, which is virtual marking⁵;
• or, when from the character of the article this cannot be done, fixing to the article or to its package a label containing a like notice⁵.

Virtual marking was added to the statute in 2011 by the America Invents Act^5,8. The USPTO's 2014 report to Congress says that Congress intended virtual marking to save costs for manufacturers and to facilitate marking of small products⁸. Before the Act, marking meant placing the word and the patent number on the article, or on a label on the article or its package where that could not be done^5,8.

The 2014 report also says the statute does not specify the degree of correlation required between the article and the listed patent numbers for the posting to be a legally sufficient association. It describes a 2011 district court decision holding that a web address alone, without the word "patent" or "pat." on the item, did not give constructive notice⁸.

In the US, if the patentee fails to mark, no damages are recovered in an action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe. In that case damages may be recovered only for infringement occurring after the notice. Filing an action for infringement constitutes such notice (35 U.S.C. 287(a))⁵.

The USPTO describes the purpose of marking as providing constructive notice to the public that the article is patented, and says that failure to appropriately mark can preclude recovery of damages until effective notice is given⁸. Summarizing Federal Circuit decisions, the same 2014 report says that satisfaction of the constructive notice requirement is a question of fact, that the patentee bears the burden of proof to show adequate constructive notice, and that once marking has begun it must be substantially consistent and continuous⁸.

The marking provision concerns patentees and those making or selling patented articles for or under them. The Supreme Court held, under the predecessor statute, that a patentee who had not made or sold the patented article was not barred from recovering damages before actual notice (Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 297 U.S. 387 (1936))⁹. 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))¹⁰. Beyond the statutory text, the USPTO's summary and these two rulings, this page does not cover how courts apply the marking requirement.

The penalty under 35 U.S.C. 292(a) is a fine of not more than $500 for every such offense, and only the United States may sue for it. A person who has suffered a competitive injury as a result of a violation may file a civil action for damages adequate to compensate for the injury⁶. Marking a product with matter relating to a patent that covered that product but has expired is not a violation⁶.