Congress OKs “Virtual” Patent Marking;Patent Reform Limits False Marking Suits

As you may know, in order to insure that you are entitled to immediate damages for patent infringement, it has been necessary to “mark” product(s) covered by patent(s) with the patent number(s). Historically, this has been done by printing and placing labels on products or molding or otherwise imprinting them into the products. As patents expire and new ones are granted, changes to the marking(s) are required on an unpredictable time table.

Recognizing this problem, a new rule was passed with the recent revision to the patent act that allows you to instead, “virtually” mark your patent numbers on things by using the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet (e.g., www.company.com/patents), that associates the patented article with the number of the patent.

Alternatively, you may continue to physically mark the patent number on the product as in the past. Unlike many of the changes to the patent act, this virtual marking rule went into effect immediately and is now in force. This only applies in the United States so it is unclear what effect, if any, it will have anywhere else in the world.

Coincident with this change in product marking, Congress also saw fit to put an end to the vast majority of false marking strike suits that plagued many companies. It did so by requiring that any claims for false marking (i.e., claims for marking a product with the words “patent pending” or “patented” or for maintaining an expired or erroneous patent number on a product) be brought only by the Federal Government or someone who has suffered a “competitive injury” as a result of the false marking. No longer can a random member of the public (or a lawyer or law firm out to make a quick buck) bring a claim for thousands of dollars against a manufacturer because a product is marked with a number of an expired patent.

For additional information about these or other patent-related issues, contact your Boyle Fredrickson attorney.