Virtual Patent Marketing
If you have a submitted a patent application, or plan to, this information may help you save on manufacturing costs and quickly stop copycats before they cause significant sales loss.
The first thing you need to know is that proper marking of a product allows a patent owner to collect damages from infringers as long as the infringer has adequate “notice” of infringement.
35 U.S.C. § 287(a) states:
In the event of failure so to mark, no damages shall be 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.
If a product is not properly marked, the patent owner may only collect damages from the time the infringer received “Actual” notice, such as a cease-and-desist or the filing of an infringement suit, not from the time of patent grant or first public sale. “Constructive” notice is achieved by properly marking patented products prior to any infringement. Constructive notice offers significant advantages to the patent owner in that accused infringers cannot plead ignorance for failure to receive an Actual notice. Patentees and their licensees should ensure that any article that may be covered by at least one patent includes the correct marking, and they should communicate this to the manufacturers and distributors.
Traditional vs. Virtual Patent Marking
Prior to the America Invents Act (AIA) of 2011, the standard for marking was affixing the full relevant patent number(s) or “pat./patent pending” to the product. Now, the patent marking statute permits “virtual patent marking,” (VPM) which can provide patent owners flexibility to add or remove patents associated with a particular product. A patentee employing VPM may instead mark the patented article with a website URL that is accessible to the public (i.e., it cannot be behind a paywall or click-through agreement), where a person could then easily look up and find which patent(s) cover the product.
Benefits of VPM
According to the AIA’s legislative history, Congress intended the VPM to save costs for manufacturers and to facilitate effective marking of small products. Updating molds/stamps/etc. to display new patent numbers, changes in pending status, remove expired patents, etc. can be a financial drain to manufacturers. For example, the Solo Cup company claimed that retooling the manufacturing process to reflect changes in patent status would cost the firm in excess of $500,000 (Pequignot v Solo Cup Co, 608 F.3d 1356 (Fed Cir 2010)). With VPM, patentees can simply update their website without having to create unique markings on each different product.
35 U.S.C. § 287(a) requirements and cautions:
Format: the product must have the words “Patent” or “Pat.” followed by the internet webpage (not the patent number(s)). Examples: Patent: www.example.com/patent OR Pat.: www.example.com/patent
Patent notice must be “fixed” on the patented article. If the character of the article itself prevents fixing notice to the patented article, the patentee should mark the article’s packaging, label, or container.
Marking must be consistent and continuous. Although a negligible number of unmarked products may not be considered noncompliance, patentees should ensure that “substantially all” of the patented articles are marked.
The marking must “associate” the patented article with the number of the patent. Anyone who looks at the product should be able to find the patented article on the webpage quickly and without any significant effort. The Delaware District Court recently clarified what does, and does not, constitute adequate association, concluding that a "website itself must do more than simply list the patentee's patents." (Mfg. Res. Int'l v. Civiq Smartscapes, LLC, Case No. 17-269, 2019 U.S. Dist. LEXIS 146060, at *3 (D. Del. Aug. 28, 2019)). Some companies continue to ambiguously list patents on their websites, which should be avoided.
Conclusion
Because there is not a wealth of case law on VPM, and despite also being adopted in the UK, there is not really a consistent standard for formatting and timestamping a patent reference website. In light of this, here are some tips to ensure maximum protection:
Clearly label (e.g., in a table graphic) the relationship between each product its patents.
Periodically review the website to ensure that it is accurate and up-to-date (reflecting new products, or updating issued/expired/invalidated patents).
Document timestamped records that demonstrate consistent and continuous virtual marking at the earliest available date (e.g., keep a written log, date screenshots, etc.).
Finally, here are a couple of live examples that are correctly using VPM. Note that the website addresses are fairly short, which can save space when marking the product/packaging:
https://tivo.pactsafe.io/legal.html#patents
https://www.totani.co.jp/en/patent.html