The New Virtual Reality: Virtual Patent Marking
The US Patent and Trademark Office submitted a report to Congress outlining the progress and underutilization of virtual patent marking in the three years since it became available under the America Invents Act (AIA). The report was directed at analyzing the effectiveness of “virtual marking” as a viable substitute to the physical marking of articles.
Virtual marking is a means of providing patent information that is always current, as both a benefit to consumers and a cost-reduction measure for businesses. Patent information may change frequently, and a virtual marking system allows this data to be kept current on the internet rather than incurring the expense and delays of changing physical products or packaging with each update.
Based on public comments and the USPTO’s independent research, the report found 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.” The report further stated that it could be beneficial to revisit the concept of virtual marking in the future to account for user experiences and to collect additional data and information as case law develops. According to the report, virtual marking has substantial promise as a tool for patentees and the general public, but is being underutilized as further legislative and judicial guidance is needed to ensure that applicable statutes are not violated through attempts at 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 is when an alleged infringer is directly informed that its product infringes the patent. Constructive notice is achieved by attaching a product with the word “patent” or an abbreviation along with the patent number. If a patented product is not marked with its patent number, damages for infringement will be limited to the time period after the patentee gives actual notice.
The AIA introduced a new method for patent marking where products could be marked virtually rather than physically. Instead of printing the patent number on the product, patentees can display the term “patent” or “pat.” with an accompanying URL where the patent number can be located. In contrast, patentees who utilize physical marking must be thorough and properly identify the patent numbers marked on their products due to the statutory penalties for false marking.
The most significant advantage of employing virtual marking is that a patentee can avoid the expense and energy required in placing patent information on each product and then keeping that information up to date. Rather than adjusting the manufacturing process or revising product packaging every time a patent is issued or is affected by a court decision, the patentee can simply update its virtual marking website as needed.
Virtual marking also improves the public's access to patent information. With all applicable patent numbers accessible via the internet, consumers can access that information at their convenience and be assured that it is up to date.
Clarification of the marking and false marking statutes, either by Congress or through the courts, will help foster the push for acceptance of virtual marking. With additional guidance on how to utilize virtual marking, its noteworthy advantages may be realized and enjoyed by more patentees.
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