It is important to remember that patent marking applies to design patents as well as utility patents. The Federal Circuit made this clear in Nike Inc. v. Wal-Mart Stores, 138 F.3d 1437 (Fed. Cir. 1998), by holding that the term “damages” as it appears in the marking statute, 35 U.S.C. § 287(a) applies to recovering the infringer’s profit under 35 U.S.C. § 289 as well as to the recovery of damages under 35 U.S.C. § 284.
In reaching their decision, the Court reviewed the statutory history of the damages and profits statutes for both design and utility patents, as well as the statutory history of the marking statutes. The Court found that the Patent Act of 1887, which was specific to design patents and removed the apportionment requirement when recovery of the infringer’s profit was sought, “was enacted to overcome the allocation problem for designs, and did not deplete the remedies available for either utility or design patent infringement.” Id. at 1441-43. Additionally, the Court found that the history of the marking statute supported the “conclusion that the marking statute with its use of the word ‘damages’ applies broadly to include recovery of the infringer’s profits under the special provision for design patent infringement.” Id. at 1445.
Consequently, the new America Invents Act (“AIA”) virtual marking provision, 35 U.S.C. § 287(a), is useful for design patent owners. The virtual marking provision states:
[p]atentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address . . .
35 U.S.C. § 287(a) (emphasis added). Thus, an article covered by one or more patents, including design patents, need not list each individual patent that covers a product. Instead, the product can be marked with the word “pat.” and list a website where the patents applicable to the article in question may be listed.
Finally, design patent owners should also be aware that the false marking statute, 35 U.S.C. § 292, applies to design patents. See e.g. Marvellous Day Elec. (S.Z.) Co. v. Ace Hardware Corp., No. 11-8756, 2013 U.S. Dist. LEXIS 122212 (N.D. Ill. Aug. 27, 2013) (assessing whether Ace intended to deceive consumers into believing that Christmas lights advertised as “patented” were made or sold by Marvellous Day); Buehlhorn v. Universal Valve Co., Inc., No. 10-559, 2011 U.S. Dist. LEXIS 34429 (S.D. Ill. Mar. 31, 2011) (determining whether Universal Valve Co intended to deceive consumers by marking its products with an expired design patent number). Accordingly, it is important to remember to not mark products with a design patent number that does not cover the product or with the number of an invalid or expired patent.