found the company lacked the requisite intent required by the statute. Had Solo been found ... The URL directs to a webs
Why You Should Care About Patent Marking By Malcolm McGowan, Ph.D. and Dana Mahadeo, Ph.D., Womble Carlyle Sandridge & Rice, LLP It’s not unusual to find products marked with one or more patent numbers. Why go to the trouble and expense of marking your product with a patent number? It’s simple: damages for patent infringement are only available to the patent owner from the time that an infringer had knowledge of the existence of a patent. Under 35 U.S.C. § 287, marking a product with the number(s) of any patents that cover that product constitutes constructive notice that the article is protected by those patents. Now, the America Invents Act of 2011 (“the AIA”) makes patent marking easier while reducing the potential liability associated with improper patent marking. In order to take advantage of the constructive notice provisions of the law, patent owners are encouraged to mark patented articles with “patent” or “pat.” and a corresponding patent number. Traditionally, the marking is applied directly to the patented article; if marking the product is not practical, it is permissible to mark the packaging. It is also critical that the product be marked with the correct patent number(s), and that products are not marked with the numbers of expired patents. Incorrect patent marking can lead to liability under 35 U.S.C. § 292, which specifies the penalties for falsely representing patent protection on products. In addition to actual damages, statutory damages are available in an amount up to $500 per unit sold. Further, § 292 allowed the filing of qui tam actions, making false marking lawsuits potentially very lucrative for entrepreneurial individuals. For example, in a 2010 decision in a qui tam case, the Solo Cup Co. was found not liable for false marking of nearly 22 billion disposable cups, because the court found the company lacked the requisite intent required by the statute. Had Solo been found liable, penalties could have exceeded $5 trillion. The AIA eliminates qui tam actions for false patent marking. Under the new law, only plaintiffs whose businesses have been harmed by false marking can collect damages arising from the false marking. The AIA also provides an alternative to “traditional” marking practices by means of “virtual” marking. With virtual marking, instead of marking a manufactured article with a patent number, the patentee marks the article with a URL or website address. The URL directs to a website that lists the patent numbers that would otherwise been marked directly on the product. The patent owner must maintain an up-to-date listing of valid patents covering the manufactured product. To do so in the event that a patent is invalidated, or if the product changes in a way that makes a particular patent irrelevant, the patent owner merely changes the listing on the web page. This procedure can offer substantial savings compared to traditional marking procedures, where the down-time to change a cast, mould, or stamp for a marking change could take days and slow down the production of items at a significant cost to the patent owner. Virtual marking also makes it easier to “mark” a physically small product with multiple patent numbers. The patent owner may also use virtual marking to list patent application numbers, where the application claims, if issued, would cover the listed product. Once patents mature from the listed patent applications, the application numbers can easily be replaced with patent numbers with no change to the manufacturing process. Finally, virtual marking makes it easier for patent owners to “mark” products that are produced by a patented process, or whose use could be covered by a method claim. The presence of the virtual listing creates an opportunity for patent owners to identify potential infringers by monitoring page views and/or subscriptions to their virtual marking webpage. A patent owner that
records a page view from a computer based in the network of a competitor may be able to use that information as basis for an argument that the competitor willfully infringed the listed patents because they had actual knowledge of the patents, and of the patent owners’ opinion that the patents covered a particular product. Proving willful infringement provides the opportunity for the patent owner to seek treble damages in court. The virtual marking provisions in the AIA thus provide patent owners with an easy, straightforward, and beneficial system to put competitors on notice regarding patent coverage for their products. Gone are the manufacturing costs and downtime associated with traditional marking procedures. Further, the limitations on who may bring qui tam false marking suits has reduced the risk of false marking. For all these reasons, virtual marking presents an easy and efficient method for patentees to list their products and associate the requisite patents that protect them.
***** About the Authors: Malcolm McGowan, Ph.D., is a member of the Biotechnology / Chemical / Pharmaceutical Patent team within Womble Carlyle’s Intellectual Property Practice Group. Based in the firm’s Washington, D.C., office, Malcolm focuses his practice on IP matters in a wide variety of technological disciplines, including biotechnology, pharmaceuticals, computerized healthcare management, software, electronics, and designs. He can be reached at (202) 857-4572 or
[email protected].
Dana Mahadeo, Ph.D., is a member of the Biotechnology / Chemical / Pharmaceutical Patent Team of Womble Carlyle’s Intellectual Property Practice Group. Dana focuses his practice on the representation of life science companies that develop a wide range of technologies, including pharmaceuticals, biotechnologies, and agricultural and diagnostic technologies. He can be reached at (202) 857-4575 or
[email protected].
