Under U.S. patent law, damages resulting from a successful claim of patent infringement can only be recovered from the date that a patent holder gave infringers proper notice of the Patent. Traditionally, providing proper notice meant physically marking the article, such as through an engraving or molding process or labeling, with relevant, valid and unexpired patent numbers. Under the New Patent Marking Rules (also know as virtually patent marking), a patent holder may use a website to provide a listing of its products and any associated patents where at least one claim of the patent covers the product so long as the requirements of the virtually patent marking are met.
Under U.S. patent law, damages resulting from a successful claim of patent infringement can only be recovered from the date a patent holder gave infringers notice of the Patent. Notice can be either “constructive” or “actual,” with proper marking of a patented product constituting constructive notice to the public and direct communication with a potential infringer of an existing patent constituting actual notice.
There are typically two types of damages in patent infringement litigation, a reasonable royalty relating to the sale of the infringing products, and the more costly “lost profits” on the lost sales of a patent holder’s patented product.
Under U.S. patent law, the patent holder may seek damages for up to 6-years prior to the filing of a claim for patent infringement if the patent holder has provided proper constructive notice. As such, proper marking of a patented product can significantly impact the amount of damages available to a patent holder.
Traditionally, properly marking a patented product meant physically marking the article, such as through an engraving or molding process or labeling, with relevant, valid and unexpired patent numbers. Courts have held that merely marking a product with the terms “Patented” or “Patent Pending,” without reference to a specific patent number or serial number, was not sufficient.
Under the New Patent Marking Rules (also know as virtually patent marking), a patent holder may use a website to provide a listing of its products and any associated patents where at least one claim of the patent covers the product.
In our opinion the below example website listing plus the product marking should meet the requirements of the New Virtual Marking Rule. In our opinion you should be able to mark a mold with the word “PATENT” followed by the Company/Individual Web Address, which has a link to the associated (your) patents. The status can then be updated as shown in the below example.
US Patent. No. 5,555,555 [EXPIRED]
US Patent. No. 6,666,666
US Patent. No. 7,777,777
As a disclaimer since the law for the “virtual marking provision” is new, we cannot verify that the example listings above will be upheld as proper marking. However, in our opinion the above listing would appear to meet the criteria for the new virtual marking provision.
In regards to the marking of Publish Patent Applications, under the New Virtual Marking Rules, although marking products or websites with published applications is not required, it is recommended that Publish Patent Applications also be marked as the New Rules does provide a patent holder with a “provisional” right to possibly obtain a reasonable royalty from a potential infringer during the period beginning on the date of publication of the application and ending on the date that the patent is issued if the potential infringer had notice of the published patent application. An example of a marking of a Publish Patent Application on a covered product would be Pat. Pending “web address”.
With how integral and prevalent websites are in the current business environment, the New Patent Marking Rules provides patent owners with a tool to not only provide updated proper notice to potential infringers in order to satisfy U.S. patent law for damages but also to quickly streamline the process compared to the traditional physically marking the patented articles so long as the requirements of the New Patent Marking Rules are met.
Please feel free to contact us if you have any further questions.