You put a lot of time, money, and effort into obtaining a patent and all the valuable rights and protections that come with registration. Those rights include the potential recovery of substantial damages from others who infringe on your patent. But if you fail to let the world know about your hard work by not properly marking your product or invention with the details of your patent registration, you could lose out on thousands or millions of dollars in compensation that would otherwise be available.

What Is Patent Marking?

Just as the registered trademark symbol ® and the copyright symbol © provide notice that the mark or creative work is protected under federal law, patents have their own marking rules. In its simplest sense, patent marking means displaying the patent number – or a URL for a website that contains the same information – on a patented product.

Why Is Patent Marking Important?

Proper patent marking serves as legal notice to potential infringers that a valid patent protects the product. If marking was proper, an infringer would have known or should have known about the existence of the patent as displayed on the product, and they could be held liable for damages that extend much farther back in time than they would without proper marking. In the absence of compliant patent marking, the clock would start ticking on damages only from the date the patent holder provides actual notice of infringement to the alleged infringer. Proper patent marking instead starts the period for which a patent holder can recover damages without actual notice of infringement. This could amount to as many as six years of damages.

Patent marking is not required under the law. But to avail yourself of the potential damages that arise from patent marking, it is essential that the marking complies with the requirements of Section 287(a) of the Patent Act. Improper patent marking will deprive you of recoverable damages, but it can also leave you exposed to liability for false marking if there is deceptive intent.

Marking Requirements Under The Patent Act

As provided in Section 287(a) of the Patent Act, anyone who makes, offers for sale, sells, or imports into the United States a patented product may give the public notice of the patent by marking it in one of three ways:

• Affixing the word “patent” or the abbreviation “pat.” on the item, together with the patent number.
• Affixing the word “patent” or the abbreviation “pat.” on the item together with the URL of a website accessible to the public free of charge that associates the patented article with the number of the patent (this is often referred to as “virtual marking”).
• In cases where affixing such information cannot be done due to the character of the article (such as its size or materials), affixing a label containing that information to the item’s packaging. Marking in this manner is not proper if done for mere convenience or aesthetic reasons.

In the case of virtual marking, the listed website can’t just list a company’s patents or make associating a specific patent with a specific product a research project for visitors. The website must clearly correlate each product covered by at least one claim of a patent to that particular patent or patents.

What About “Patent Pending” Marking?

Plenty of patent applicants mark their good with “Patent Pending.” There is no requirement, detriment, or advantage to doing so. Unlike marking for issued patents, marking an item “Patent Pending” does not offer any additional protections or increase recoverable damages. But applicants should update their marking per the requirements set forth above once the patent issues.

Potential Liability For “False Marking”

Section 292 of the Patent Act allows the United States and anyone who has suffered a “competitive injury” to bring a claim against a patent holder for false marking. A claimant must show the patent does not cover the marked article and the patent owner marked the article with the intent to counterfeit or deceive the public.

There are many nuances to patent marking, and failing to “substantially comply” with the Patent Law’s requirements can make the marking worthless. If you have questions about or need assistance with patent marking, please contact the attorneys at The Dobrusin Law Firm.