In September, the US Patent and Trademark Office released a report to Congress describing the progress (and underutilization) of virtual patent marking in the three years since it first became available under the America Invents Act. The report was directed to analyzing: (1) the effectiveness of “virtual marking” as an alternative to the physical marking of articles; (2) whether such virtual marking has limited or improved the ability of the general public to access information about patents; (3) the legal issues, if any, that arise from such virtual marking; and (4) the deficiencies, if any, of such virtual marking.1

On the basis of nine public comments and the USPTO’s independent research, the report concluded that "virtual marking has likely met its intended objectives of reducing manufacturing costs, facilitating marking of small articles, and improving the general public’s access to patent information. However, it could be beneficial to revisit the issue at a later date, to account for further user experiences, additional data, and case law developments."2

According to the report, virtual marking has significant promise as a tool for patentees and the general public, but that it appears to be underutilized, in part because further legislative and judicial guidance is necessary to ensure that applicable statutes are not violated through attempts to virtually mark.

Patent Marking, False Marking and the Basics of Virtual Marking

Under the patent marking statute, 35 U.S.C. § 287(a), there are two ways to provide notice: actual and constructive. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice can be achieved by affixing a product with, for example, the word “patent” or abbreviation “pat.” along with the patent number. If a patented product is not marked with the patent number, damages for infringement will be limited to the time period after the patentee gives actual notice to an alleged infringer. To recover damages under the marking statute, the patentee's marking must be "substantially consistent and continuous."3 Generally speaking, a patentee fails to meet this standard if it doesn't mark some of the manufactured articles covered by the patent or stops marking such articles altogether for some period of time.

When enacted, the AIA introduced a new method for patent marking whereby products can be marked virtually rather than physically. Instead of printing the actual patent number on the product, patentees can display the term “patent” or “pat.” along with an accompanying URL address of a Web site where the actual patent number is located.

Due to the statutory penalties for false marking, patentees who utilize physical marking must be careful to properly identify the patent numbers marked on their products. Likewise, patentees who employ virtual marking must be careful about the patent numbers associated with their products, making sure to maintain the accuracy of patent numbers listed on their virtual marking websites.

Strengths of Virtual Marking

Virtual marking offers many benefits over traditional patent marking.

Cost and Time Savings

The most significant advantage is that the patentee can avoid the expense and effort required to place patent information on its products and to keep that information updated. Rather than adjusting its manufacturing process or revising product packaging every time a patent issues or is affected by a court or USPTO proceeding, the patentee can simply update its “virtual marking” website as needed.

Easier Constructive Notice

Virtual marking also ensures that potential infringers will have constructive notice of the identified patents.

Avoidance of False Marking

The use of virtual marking can also ease concerns over potential false marking claims, since the patents associated with a particular product can be adjusted relatively quickly and easily.

Ease of Marking

Additionally, virtual marking facilitates the marking of small articles of manufacture, as well as the marking of multiple patents that cover a single article of manufacture. Physical space on an article becomes less of an issue, assuming that the URL for the identified virtual marking website is not unduly long.

Increased Public Access to Patent Information

Virtual marking also improves the general public's access to patent information. With the  marking of patent numbers on an Internet site, those reviewing the patent numbers are ostensibly already accessing the Internet, where further information regarding the patent is likely to be found.

Weaknesses and Unresolved Issues With Virtual Marking

Despite its apparent benefits, it is understandable that virtual marking has not been widely adopted, since many questions remain about how one may comply with the applicable statutes when marking virtually.

Accessibility of the Posting on the Internet

Section 287(a) specifies the use of "an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent." The requirement that the posting be "on the Internet" and "accessible to the public" raises the issue of the patentee providing and maintaining access to the posting on the Internet.

Several factors, many outside the patentee's control, may affect availability of the posting. For example, an Internet service provider who hosts the marking website might face downtime due to technical difficulties. There may be incorrect or broken links to virtual marking pages. A patentee may fail to make the payments required to maintain service from an Internet service provider, perhaps inadvertently or due to financial difficulty. Any website, especially those of well-known companies, may be the target of malicious activities such as hacking or denial of service attacks that could compromise the availability of the website.

Ultimately, the issue that must be addressed by courts is: How long and in what circumstances is website unavailability permitted without violating the marking statute and its "substantially consistent and continuous" requirement?

Associating the Patented Article With the Patent Number

Another issue relates to the requirement that the Internet posting "associates the patented article with the number of the patent." Does there have to be a one-to-one correspondence in the association between a product and each patent that covers it? If not, is it permissible to list several patents and several products on a virtual marking website and simply state that the listed products are covered by one or more of the listed patents?

With regard to this issue, the key unanswered questions are: What level of precision is required under the marking statute, and what level of imprecision constitutes a violation of the false marking statute? And, how soon after a change in patent status or coverage occurs do website updates of patent listings have to take place?

Treatment of Patent Applications

The false marking statute, 35 U.S.C. § 292, excludes from false marking liability the listing of an expired patent that covers a marked article. Section 292 also recognizes the use of the phrases "patent applied for" and "patent pending" in association with a product. However, the patent marking statute, Section 287, does not address the use of such language. As a result, although the marking of "patent pending" on a product is sometimes utilized to inform potential infringers that a patent covering the product may issue, the patent statute does not provide any advantage to using “patent pending” or any penalty for not using “patent pending.”

Importantly, one cannot use the language "patent pending" to comply with Section 287, and such use does not entitle one to damages prior to issuance of a patent, nor does it provide any basis for objecting to copying. However, mismarking a product as "patent pending" when no such patent is in fact pending could subject the patentee to liability for violation of the false marking statute.

As the report suggests, given the ability through virtual marking to easily change a patent-to-product association when a change in patent status or coverage occurs, Section 287 should be amended to provide some guidance on the use of "patent applied for" and "patent pending." Doing so would allow a product to be marked once with “patent” or “pat.” or "patent pending" and the Internet address of the virtual marking webpage, with appropriate updates being made to the status of the patent on the website, to comply with Section 287.

Privacy and Security of Visitors to Virtual Marking Websites

Besides posing some uncertainty to patentees who wish to virtually mark, there are also some potential drawbacks to the public with virtual marking. The primary concerns for potential users of virtual marking websites appear to be privacy and information security.

While the marking statute states that the Internet listing must be "accessible to the public without charge for accessing the address," there may be some significant deterrents and impediments that are unrelated to monetary cost. For example, many websites track visitors by logging their IP addresses, require the downloading of tracking "cookies" that monitor the Internet habits of visitors, and require registration before permitting access to content. So, even though a virtual marking website might be "accessible," it might not be desirable for a user to access such a website.

Conveying Patent Information Easily and Accurately to the Public

Beyond privacy and security concerns, the ability of virtual marking websites to easily and clearly convey patent information appears to be at issue. First, the public needs Internet access to obtain the primary benefits of virtual marking, and such access is neither uniform nor affordable to all members of the public.

In addition, when many patents and products are listed on a virtual marking website without any indication of which patent covers which product, does such a listing meet the statutory requirement of "associat[ing] the patented article with the number of the patent?" In cases where many (perhaps tens or hundreds) of patents are associated with a product, should the patentee be required to identify the most relevant associated patents? If the product has specific parts that are each covered by a particular patent or patents, should the patentee be required to identify what parts of a product are covered by particular associated patents?

All of these issues arise in the context of virtual marking and each impacts the value of a virtual marking website to the public. In the report, the USPTO suggested that a standard format might be developed to ensure that the statutory requirement for "association" is met. The USPTO also noted a need to educate the public about the availability and characteristics of virtual marking.

Conclusion

Clarification of the marking and false marking statutes, either by Congress (through statutory amendment) or through the courts (via case law), is needed to address the above concerns regarding virtual marking. With additional guidance on how to utilize virtual marking, its significant advantages may be realized and enjoyed by more patentees and members of the general public. Public education, like that suggested by the USPTO, may also increase the use of virtual marking.