So my patent was granted. What is all this about marking my patented products, and how do I do it?
The marking statute encourages patentees to give notice that an article is patented. Traditionally, such marking involves putting the patent number on a product, which is protected by a particular patent. The purpose of patent marking is to inform the public that a particular article is patented and to help avoid penalizing one for innocent infringement (e.g., when an article is not marked). Although a patentee does not have a duty to mark patented products, infringement of unmarked articles precludes the recovery of damages (i.e., money) from an infringer. There is also a risk of false marking an article, i.e., marking a product with an incorrect patent number or one that doesn't have claims covering the product.
In light of 21st Century economic and business challenges, the US Congress passed legislation, the Leahy-Smith America Invents Act (AIA), designed to establish a more streamlined patent system and limit counterproductive legislation costs. One of the many changes made included the patent marking statute, 35 U.S. Code § 287, which included provisions relating to both Virtual Marking and False Marking.
As suggested, false marking refers to marking an article as patented or patent pending when in-fact it is not. Pre-AIA false marking statute specified a fine of $500 for each offense and it allowed any person to sue under a qui tam action to collect damage. Even the marking of patents on products that were merely expired or not updated would be $500 for each product. This would add up quickly and could easily accrue into multi-million dollar damages for mass produced products. The AIA narrows the scope of false patent marking such that expired patents are no longer considered false marking. Also, the use of qui tamactions, which allow a private party to sue to enforce the law and collect the corresponding money damages, has been eliminated. Under the AIA, only the United States government (i.e., not private parties looking to enforce the law and make money doing so) has standing to sue for the statutory penalty. Private parties can sue for damages, but only with proof that the false marking resulted in loss of profits, which is also known as competitive injury.
An entirely new procedure, Virtual Marking, allows patentee to reference a Web address that identifies the patent number for a product or products. Pre-AIA marking regulation required physical marks on the article or on the label to be updated to reflect the latest issuing patents. This increased manufacturing cost since it required retooling manufacturing processes or developing new product molds, for example. AIA addresses these concerns under virtual marking by allowing appropriate patent numbers to be listed on a Web page. More specifically, the markings must include the word ‘patent’ or the abbreviation ‘pat.’ and a website address that is accessible to the public without charge.
All in all, the new AIA patent marking section makes it easier for patent owners by allowing virtual marking of their products in real-time via today's technology while avoiding costly changes to product lines, as well as reducing the likelihood of frivolous litigation, by limiting the scope of recovery by private parties.