Patently Strategic Podcast: Why Patent Marking is So Important

If you look closely enough, you’ll find patent numbers on most of the physical products around you. Much like their copyright and trademark cousins, these designations are far from cosmetic. Instead, they serve a statutory requirement to provide public notice about your protected intellectual property. In the case of patent marking, not only does it reduce the risk of infringement because you are informing potential infringers of the patent’s existence, but the notice also marks the point in time to which you can go back for collecting on awarded damages. As the panel will discuss in today’s episode of Patently Strategic, American patent law operates on a simple principle: mark your products with patent numbers or watch your damages disappear!

Episode Overview

Kristen Hansen, Patent Strategy Specialist at Aurora, leads today’s discussion with our all-star patent panel, delving deeply into the Dos and Don’ts for patent marking – both physical and virtual, for the United States and abroad. Along the way, Kristen and the panel discuss:

• Patent Marking basics
• Legal requirements for patent marking
• Benefits and best practices for marking
• A real-life case cautionary tale
• Implications for worldwide marking

Patent Marking Basics

Patent marking refers to the practice of labeling a product with its patent number to inform the public of its protected status. This has historically been a physical mark on the product, but since 2011, the America Invents Act (AIA) optionally allows patentees to virtually mark their products instead. Virtual marking enables a company to update its product(s) without needing to relabel or reproduce a line of products when a new patent is issued covering the product(s). Marking is accomplished by marking the patented product with the word “Patent” or “Pat.”, followed by the patent number or a web address where the patent number is listed (if providing virtual notice in combination with physical notice).

No Marking, No Money

Patent marking can have massive implications for your ability to collect infringement damages. 35 U.S. Code § 287 says the following:

“In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.”

The collection of damages depends directly on public notice, and you can’t be awarded damages before an actual notice date. Publication of your patent, unfortunately, does not serve this notice function, but the marking of your products can. Without proper marking, damages for infringement may only be available from the date actual notice is given, which often means after a lawsuit is filed. Since damages can be decided based on the timing of notice, maximizing the monetary value of your patent is dependent on proper and timely marking, should you ever need to assert against an infringer and end up being awarded damages. The panel discusses how Arctic Cat learned this lesson the hard way in the case of Arctic Cat v. Bombardier.

Worldwide Marking

We’ve been discussing international patent strategy extensively lately – and a great episode is coming up on EU particulars – but this episode also breaks down how marking requirements vary across countries.

• Europe: no marking requirements.
• Germany: no marking requirements – damages are calculated from the infringement date regardless of marking; marking can be done to avoid unfair competition or reduced damages in infringement cases.
• U.K.: recognizes virtual marking, but limited practicality; exception of “innocence defense” when someone uses a patented invention without knowing about the existence of the patent (infringer must prove their lack of knowledge).
• France/Netherlands: no marking requirements, but similar to Germany, you can mark.
• Unified Patent Court: no marking requirements yet.
• China: marking is optional.
• Japan: marking is optional.
• Canada: no marking requirements and vehemently rejects the US policy.

Tips for Patent Pros

In terms of practical application, practitioners should consider the following discussed tips:

For Patent Prosecutors:

• Draft U.S. licenses with explicit licensee marking duties post-Arctic Cat
• Consider virtual marking strategies for complex product lines
• Advise clients on jurisdiction-specific enforcement strategies

For In-House Counsel:

• Budget enough to meet U.S. marking compliance programs
• Develop licensee monitoring systems to avoid Arctic Cat disasters
• Consider foreign filing strategies that bypass U.S. marking complications

Discussion Panel

Kristen is joined today by our always exceptional group of IP experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• David Jackrel, President of Jackrel Consulting
• Tiffany Miller, Patent Strategist at Aurora
• Albert Du, Patent Strategist at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP

Mossoff Minute: Patent Office Reforms

This month’s Mossoff Minute was recorded earlier this summer, but the timing of its release couldn’t be more perfect. With incoming Director John Squires receiving Senate confirmation last week and now taking the reins at the U.S. Patent and Trademark Office (USPTO), we’d love to celebrate the accomplishments of Acting Director Coke Morgan Stewart. Her tireless efforts over the past months are helping to light the path back toward reliable and effective patent rights for innovators across the country and in the global economy. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:

• Discussion Slides. Presenter notes shared during the panel discussion.
• International Patents. Patent marking is just one aspect of an intentional global strategy for patent protection.
• Software Patents: Protecting Your Digital Innovations. Much like the nuance that goes into their virtual marking, creating robust software patents requires thoughtful crafting considerations.
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform. A refresher of what’s at stake for incoming USPTO Director Squires.