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The Basics of Patent Marking

Obtaining a patent is only the first step in protecting your intellectual property. Under 35 U.S.C. §286 of the patent law, a patent holder can recover damages for infringement of an issued patent for infringing activity up to six years prior to filing an infringement action in court. However, under 35 U.S.C. §287 of the patent law, recovery is only possible for infringement that occurs from the date the patent holder can prove that it gave the infringer notice of infringement.

The patent law allows for marking patented products or products manufactured using patented processes to constitute notice given to the public. Therefore if a marked patented product is infringed, recovery for infringement can be calculated from the time that properly marked product was available in the market and not just from the time the patent holder gave personal notice to the infringer. Therefore if patent holders intend to enforce their patents, it behooves them to properly mark their patented products to provide adequate notice to potential infringers.

The patent law and court decisions provide some guidelines on how patented products should be marked:

  • Mark the product. Affix a label on the product or add a notice to a faceplate if the product cannot otherwise be marked directly. Advertising saying that a particular product is patented without marking the product itself is insufficient to give notice.
  • If there is a good reason why the product itself cannot be marked (such as undue burden on the manufacturing process, the size of the product, the nature of the product, the lack of an adequate place to mark the product, when marking the product would deface it or make it otherwise commercially unusable, etc.), then marking the product's packaging is acceptable.
  • Software can be marked to indicate applicable patents. For example, the software could indicate the patents under which the software is protected during startup, in the documentation of the software, or in specific links within the software itself. In internet based software, providing a link to intellectual property notices would suffice to provide adequate notice.
  • Use the terms "patent" or "pat." followed by the number of the issued patent.
  • The marking must be legible and readable - a product is insufficiently marked if someone has to use a magnifying glass to read it.
  • Use the terms "patent pending", "patent applied for", etc. only if a patent application has actually been filed. Avoid marking products if you intend to file a patent application but have not yet done so. This could be construed as "false marking" under 35 U.S.C. §292. Producers of products marked to give the impression that a patent is being sought if no patent application has actually been filed may be subject to fines for each instance of false marking.
  • Do not falsely mark products to give the impression that it is protected by a valid patent. This could lead to accusations of false marking for which you could incur a fine.
  • While there are many products commercially available that are marked with expired patents, do not continue to mark products if they are no longer protected by a patent. This could lead to accusations of false marking for which you could incur a fine.
  • Remember that patents are only effective in the countries in which they are issued. Other countries may have different marking requirements. If you seek to enforce patents that you have obtained in another country you should find out how to properly mark your products before exporting to or importing from overseas.

If you decide to mark your products that are covered in whole or in part by a patent or a patent application, have your patent counsel review how best you can mark your products to be in compliance with the patent statutes on marking and notice.

For advice or assistance regarding your intellectual property legal needs, please contact the author of this article, any member of the Intellectual Property Group, or any MacDonald Illig attorney with whom you have worked.