Patent marking refers to notifying the public that a product is patented, typically by including the patent number on the product. The importance of proper marking cannot be overstated for companies who intend to enforce their patent rights. The following are tips for properly marking your products and a breakdown of how marking can maximize potential damages in case of infringement.
Methods of patent marking
There are generally two methods of patent marking.
- Traditional: These are physical notations on a product or package that includes patent information. They start with “patent” or “pat” and are followed by the patent number. Traditional patent marking comes with some drawbacks, including the cost of having to change packaging or manufacturing processes if the patent expires.
- Virtual: Parties can maintain a website that includes the pertinent patent details, then put the URL on the product or packaging. The site should include patent numbers, product names and descriptions to adequately identify and notify the public of patented products. Simply listing patent numbers without the specific products covered by those patents is inadequate virtual marking. Owners can update the site as patents change or expire and should continue reviewing it to ensure accuracy and completeness.
Choosing either of these methods (and complying with marking best practices) ensures you are giving the public constructive notice of your patent, which is crucial if someone infringes on your patent. It is also crucial in ensuring that you receive the maximum benefits that come with ownership of your patent rights.
Patent marking and damages in a lawsuit
Providing notice of your patent is critical to monetary relief. You can give actual notice to someone with a cease and desist letter, or you can mark your products to notify the public of your rights. Thus, if someone infringes on your patent, you could receive damages that date back to one of two points:
- The date you started marking your product, or
- The date of actual notice through a cease and desist letter to the infringer
Patent holders who mark their products from the beginning could be eligible to receive pre-lawsuit damages for the entire infringement period.
For example, if infringement of a marked product began in 2015 and you, the patent holder, filed a complaint in 2021, you may be entitled to pre-suit damages for the entire six-year period from 2015 to 2021.
In an instance of infringement, this is a best case scenario and why correct patent marking, ideally from the beginning, is important.
However, if you waited to mark your products, an alleged infringer could argue they did not know about your patent until they received a cease and desist letter. Thus, any pre-suit damages you could receive may be significantly smaller.
Using the same scenario as above: If infringement of an unmarked product began in 2015, a cease and desist letter is sent in 2020 and a complaint is filed in 2021, the damages recovered by the patent holder from the alleged infringer’s profits will be much smaller. Here, damages may only be recovered starting from the date the cease and desist is received.
If you don’t mark, failing to send a cease and desist letter means you can only recover damages when the complaint is filed.
A patent holder’s worst case scenario will see them recover no damages from an infringement due to the expiration of their patent. In this case, a patent holder will recover no damages because the infringed product remained unmarked for the entire infringement period and the complaint was filed after the patent had expired.
Patent infringement can take a tremendous financial toll on a patent holder, but recovering damages relies on the patentee’s actions, not necessarily the infringer’s knowledge.