USPTO seeks comment on “virtual marking” of patented products

When a company sells a product for which it also holds a patent, it is common practice for the company to mark the product with the patent number.  Patent marking serves to place the public on notice that the product is patented  — thus potentially deterring infringers.

More importantly, marking a product helps to maximize the damages available in an infringement action.  Section 287(a) of the Patent Act states that a patent owner who fails to mark its products can only collect damages for infringement if the infringer was notified of the infringement and continued to infringe anyway.

Complying with patent marking obligations can be difficult, especially for products that are covered by multiple patents. The ubiquity of e-commerce, smartphones, and our “always wired” society have led many to consider whether the patent marking requirement is antiquated. Congress did so in 2011, when the America Invents Act (AIA) allowed patent holders to mark a product with a website address instead of a patent number, if the website contains a list of patents covering the product.

The AIA also directed the USPTO to provide Congress with a report on the effectiveness of virtual marking by September 16, 2014.

In order to help it prepare that report, the USPTO seeks public input. Specifically, the USPTO is inviting public comment on the following aspects of virtual marking:

  • whether virtual marking is effective for giving public notice;
  • whether virtual marking has limited or improved the public’s ability to access patent information;
  • whether and what legal issues arise from virtual marking; and
  • whether virtual marking has any deficiencies.

The USPTO is accepting comments via email at virtualmarking@uspto.gov, and via other methods described in the USPTO’s full notice.  Act fast:  comments must be submitted by July 16, 2014.

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