Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Patent Marking: No Mark, No Money
In this month’s episode, we’re talking about patent marking – and its massive implications on your ability to collect on infringement damages.
We’ve all seen patent numbers on physical products. Much like their copyright and trademark cousins, these designations are far from cosmetic. And instead 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 from which you can go back to for collecting on awarded damages. As the panel will discuss today, 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 Do’s and Don’ts for patent marking – both physical and virtual, for US 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
** Mossoff Minute: Coke Morgan Stewart's Patent Reforms **
In this month’s minute, Professor Adam Mossoff celebrates the accomplishments of Acting USPTO 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.
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Josh: [00:00:00] Good day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It's for inventors, founders, and IP professionals alike, established or aspiring. And boy, are we glad to be back.
Apologies for the brief, unannounced summer break, but we ended up partnering with Thomson Reuters on a massive deep dive into how AI is impacting the industry. This is on top of working diligently on the upcoming complete redesign of our website. So our content development bandwidth ultimately took a hit and the podcast paid the price.
But we're back in action now and are planning on extending our podcast calendar into December when we typically take a break to make up for slacking on the microphone this summer. And for our return in this month's episode, we're talking about patent marking and its massive implications on your ability to collect on infringement damages.
We've all seen patent numbers on physical products. Much like they're copyright and trademark cousins. These designations are [00:01:00] far from cosmetic and instead 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're informing potential in refrigerators of the patent's existence, but the notice also marks the point in time from which you can go back to for collecting un awarded damages is the panel we'll discuss today.
American Petant Law operates on a simple principle. Mark your products with patent numbers or watch your damages disappear. Kristen Hansen, patent strategy specialist at Aurora leads today's discussion with our all-star patent panel, delving deeply into the do's and don'ts for patent marking both physical and virtual for us and abroad.
Along the way, Kristen and the panel discuss patent marking basics, legal requirements for patented marking benefits, and best practices for marking a real life case, cautionary tale. And implications for worldwide marketing. Kristen is joined today by our always exceptional group of IP experts, including Dr.
Ashley Sloate, president and Director of [00:02:00] Patent Strategy at Aurora. Dr. David Jackal, president of Jackal Consulting, Dr. Tiffany Miller, patent strategist at Aurora Albert Dew, patent strategist at Aurora. And Marie Smith, patent agent at Break Hughes Erman, LLP. And before jumping into the panel, we'd like to take you to the next installment of the Mossoff Minute.
A monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references. This 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 said to take the reins at the U-S-P-T-O, we'd love to celebrate the accomplishments of acting director Koch 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.
Professor Adam Mossoff: Lots of really important developments are occurring at the patent office [00:03:00] under Acting Director Koch Morgan Stewart. I'm speaking specifically of the Patent Trial and Appeal Board, the ptab. This has been referred to as the Death Squad for patents with an 80% or more cancellation rate. Very loose standards for accepting and adjudicating the petitions that have been filed to cancel patents at the patent office.
Since its creation. Koch Morgan Steward has, is finally bringing to bear some reform. She has reinstated what are referred to as the tive. Factors for denying petitions, and she's developing now for the first time, as should have been developed years ago, case law for how petitions should be denied. It's clearly intended by Congress, given that it authorizes the director of the U-S-P-T-O to deny petitions with zero guidance on what to do.
In terms of de denying petitions, she's developing this case law, for instance, invoking long standing standards in the [00:04:00] law, like settled expectations. A standard actually applied by the US Supreme Court in 2002 in a very important patent decision known as feto. So very deeply rooted and understandable standards that all lawyers accept and recognize in all areas of patent law, including in other areas of the legal system more generally.
And this is significant because if the PTA is to exist in any legitimate way, it really needs to have these types of procedural and substantive guardrails imposed that both protect the rights of patent owners and define with greater precision. The exact scope and application of petitions to cancel patents at the PT A.
Um, and hopefully Congress will ultimately enact prevail legislation which will bake into the ptab actually very explicit guardrails like we are seeing Koch Morgan Stewart develop because we cannot continue to have vacillating back and forth [00:05:00] standards at the p ttab with each new administration, with each new director.
Innovators require reliable and effective patent rights because they are investing over the long term. They deploy their innovation in the marketplace over the long term. And so we can't have changing rules at the patent office every four years. Prevail needs to be adopted. And Koch Morgan Stewart is showing us.
Some of the important ways that if prevail is enacted, how this will actually bring stability and reliability back to the patent system for innovators across the country and in the global economy. So stay tuned. Hopefully we'll see a good result out of all of this.
Josh: Thanks, Adam. We're also publishing clips for the Mossoff Minute, a short form videos on Instagram reels, YouTube shorts, and TikTok.
You can check out these shorts and follow us at Aurora patents on all three platforms. And now without further ado. Take it away, Kristen.
Kristen: So we're covering patent marking today, and as a quick overview, I'll give you an intro to patent marking. I'll give you some legal requirements [00:06:00] of it, some benefits and best practices, uh, a real life case, cautionary tale, and some worldwide marking, um, just notices and what, what they do around the world for marking.
So.
A definition first, patent marking actually refers to the practice of labeling a product with its patent number so that you can inform the public of its protected status. It reinforces the legal right of the patent holder, and it serves as the public notice mechanism with respect to some IP protections according to us patent law.
And some of that notice has to do with if you get sued or somebody's infringing and you're suing them, you get damages awarded. And damages can be decided based on this timing of notice. And so a marking can actually give a notice. So the actual statute is 35 USC 2 87 A, where they actually just say that.
Uh, we [00:07:00] operate in America on a simple principle. Mark your products and patent numbers or watch your damages disappear because if you don't give this kind of a notice or you don't give some other sort of notice, your damages are calculated from the time you basically put the suit onto somebody. Um, so this is because you can't really be awarded damages before an actual notice date.
And the notice date can, in this case, be a marking of these products. So really, the statute tells patent owners, patent owners really no marking no money, you know, except for damages occurring after you've actually
told an infringer to stop infringing.
Okay?
So US patent law actually
requires patent holders to mark their patent products with a corresponding patent number. This actually functions as the public notice and damage recovery in almost all infringement lawsuits where you are actually having to calculate damages, though articles can be marked patent pending once a US patent application [00:08:00] covering the article is filed.
And this does include provisional patent applications. However, patent pending doesn't get you any kind of damages. Timing line in the sand patent pending is just something where you can actually put somebody in the know that this is coming or you can actually let them know, Hey, don't infringe, because we're likely getting a patent soon.
But nothing is calculated from patent pending. But once granted, any subsequently produced articles have to be marked in compliance with the patent marking statute. Um, and, and marking can be physical and
virtual and, and we'll go into that.
Okay, so physically mark, or virtually Mark
in 2011 that Lahey Smith's a i a act that everyone hears about over the last decade, um, actually put into, uh, practice this virtual marking possibility instead of physically [00:09:00] marking. And they said, you know, if you're gonna physically mark, you have to do it a certain way.
If you're going to virtually Mark, you have to do it a certain way and you can pick between. But here, it, it basically gave inventors a little easier way to mark if they were going to virtually Mark. But some of the rules are like, you know, if you're gonna mark a product, I'm sorry, if you can't mark a product because the size constraints, right?
You may, maybe a small widget, you can instead mark the packaging or a label. And if the, the, all the other caveat to that for physically marking if the words are printed on a product of any kind of words. So the product is big enough to have words on it. The patent number or the web address to some virtual marking also needs to be included on the product.
And those are kind of the physical marking guidelines. But even if it's big enough to have words printed on the product, you can choose to do this virtual marking instead. Um, I would say don't do a combination of both. If you [00:10:00] can help it, it's just cheaper to do the virtual marking these days. But if you choose to physically mark in a certain way, you have to follow the guidelines and you have to keep things updated.
So virtual marketing really allows a company to update its products without having to relabel or reproduce. Um, especially when new patents issue covering parts of the products, it's really difficult to say, do a new mold or a new imprint or a new etching. For a particular part, right? You don't wanna pull your inventory and re etch because you got a new patent.
It's just so much easier if you're only if, if you're going beyond a single patent or two that
are already marked to just virtually mark.
Okay, so physical patent marking basics. So really marking
is accomplished by marking the patent product with the word patent or PAT period, followed by the actual patent number or followed by the web address if you're going to do virtual, virtual marking in combination with physical notice. [00:11:00] Um, and really there's something.
Really called constructive notice versus actual notice. And constructive notice really means that a person is considered to have been informed of something, even if they didn't receive a direct or actual notification. So marking is a way of providing constructive notice. And actual notice would actually be like sending a cease and desist letter or, um, sending some communication that says, Hey, we have this patented content.
You may be infringing. Or, or even just saying, Hey, we have this patented content. So tho both of those things can be noticed and they can be used to calculate damages later down the line. Any questions on what I've presented so far?
Ashley: Are you gonna go into method marking versus device marking? I will. Yep.
Okay.
Dave: And are, are you gonna give any examples of virtual marking, how people would do that in [00:12:00] practice? Um.
Kristen: Yes, I am. Okay. And I, I'll go through it and I'll actually have a couple of slide things here. Just like I've put in the slide deck for a physical marketing example where you've got pat, us, you know, d blah blah blah for design patent.
So I'll go through a few of those. So the slide deck should be helpful if you need to snag something for a client, or if an inventor is listening right now, you can go look at the
slide deck and see how somebody else has done it, or an example.
Okay?
So proper patent marking is really
important for legal enforcement only if so that you can maximize your monetary value of an invention if you have to actually recover damages in a patent infringement case. So it also, if you're marking things, it diminishes the risk of infringement because you really are informing potential infringers of the patent's existence.
Um. A lot of people, if you take a game for example, that has a little, you know, pat us patent, blah, blah blah, you, you might have a user [00:13:00] who's playing that game and comes up with an idea that to make the game just a little different and just a little more interesting, you really don't want that person to go look at your patent and then create their idea.
I'm sorry, to not look at your patent and create their idea and then subsequently sell it and start infringing you. You really wanna put them on notice that, hey, this is patented and you know, if you're going to design around it, you're gonna have to work kind of hard. So it's fine for people to do that.
It's just a matter of, hey, this is out there and be aware. Uh, and also one note, there are consequences for improperly marking. Um, so you have to be careful how you mark and it can be as bad as if you improperly mark, they can't figure out claim damages back to the correct dates in your infringement lawsuit.
Sometimes you just lose market value because you improperly mark something, you have a legal liability or misrepresentation, and it just, it, it [00:14:00] doesn't look good and it also
can function against you heavily. Um,
I'm trying to think also. So, uh, marking a product with
the words patent pending is perfectly okay, but marking it with patent pending and the patent publication number, it just doesn't satisfy these notice
provisions. It has to be an issued patent.
Okay, so some of the benefits of patent marking beyond
just these notice provisions is that it can provide enhanced legal protect protection because it's providing clarity of ownership. And it also shows typically, especially in virtual marking, how your product maps to the patent coverage. And this can really expedite legal processes.
It can expedite fail. It can expedite, um, cease and dismiss letters too, because people begin to quickly figure out that you have an entire family of something that maps and they can go look it up and they can say, oh, yep, we are infringing. We have to redo this or re design our, our product, things like that.
So it really [00:15:00] does help everyone in the market, but it really helps the owners. Who are providing exactly what they have coverage for. And you know, you do not have to say each individual feature, you just have to really map product to the patent numbers so you don't
Ashley: have to, um, I was gonna say, sorry, Kristen.
Um, imperative Care is actually a really good example of this. If you go to the Imperative Care website and you look at, I think at the bottom it says patents and trademarks, you can see, um, you know, a more flushed out page, you can see how it's mapped to their various products, if anybody's curious.
Perfect. Yep.
Kristen: That, um, and they do it well. I think they've got a really good attorney, uh, who was with them from early, early on in the startup and, you know, he's got lots of years of experience and, you know, I think guided them very well. So that is a great example. [00:16:00]
So now I'm gonna talk a little bit about best practices.
Um, and this could, this should help our inventors listening as well. So, for physically marking products, you really wanna make sure that patent numbers are clearly visible and legible on the product, and you need to use the exact patent number or numbers associated with the product. Um, you know, and if a family member of, I'm sorry, a family of products is covered by one or more patents, the mark can actually say, covered by one or more patents, colon.
And then you can put a list of patents or you can put a web address where they can be found in the virtual case. Um, but you can also put a web address and do a combination of physical and, um, virtual marking. But if you don't have. Some way of knowing that there's additional patents in like the virtual marking piece.
It's really kind of confusing to have a physical marking plus a virtual marking. So I would not recommend both. [00:17:00] Um, you can have both on separate product lines, so if one product line that's really tiny and you're never gonna use it again, let's say you physically marked it and you sell it, but you know the patent expires in a year, you maybe wouldn't bother to update anything on that if you know you're not going to have problems.
But let's say your newest products have several patents to their name.
Maybe virtual marking is best for you.
Okay, so, you know, another concern for
marking actually includes licensees of who you give your patent, uh, rights to. And so a patent owner who is licensing the patent must make reasonable efforts to ensure that a licensee is following a marking program as well. And they can, you know, you can notify the licensee that the marking is required as the patent owner, you can do this or you can include a requirement to mark in the actual [00:18:00] licensing agreement.
I actually recommend both. We forget what licensing agreements say, but it's really good to put these, you know, marking obligations into a licensee's agreement. And it's really good to follow up with notifications because people forget that it was in there, or they're, you know, two or three patents down and they're licensing two or three patents from you and they forget.
So you want your licensees to do this as well.
Okay.
Additional best practices, but moving on to virtual
marking best practices. So a patent owner must mark the product itself or the packaging for the product, and they must then also follow that by a web address. So if they're not going to mark the product itself or the packaging because of size constraints or they're just choosing to do virtual, then they have to actually have a separate website that is publicly available and free [00:19:00] and kind of clear that it's about patents.
And it could be on their main, you know, company website, but it kind of has to like, like, uh, Ashley said Imperative Care has like patents and copyrights and has a link right on that main page so they can click on it. So it has to be something kind of clear like that. Um, the patent number. Or the web address where the patent number can be found is required if you're going to physically mark.
But it's also required in the virtual marking page. It just isn't enough. If you're physically marking to say patented and it isn't enough just to say patented, um, for specific products, you have to actually map the product to the patent. Right? And, and I think when you start looking at this, if you've got nine pieces of a product, for example, nine widgets, and they're all patented on separate patent, it, it suffices to map the actual patents [00:20:00] to the single product.
But it's more clear if you break it out. And if you do know which widgets match to which patent, it's just more clear and your damages is going to go through faster. Your calculations are gonna be more accurate. And you know, maybe one person is only infringing that one widget. So it is better to do it that way, but it does take a little bit of extra effort.
But the statute itself is really product to patents mapping. And so you could get away with less. I just, I wouldn't recommend it.
Dave: So, Kristen, are you saying that you would have, on your website, you would have multiple lists and it each list would be associated with a product?
Kristen: Yes.
Dave: Okay.
Kristen: Yep. And let's see, I think I have an example coming in a couple slides here.
Ashley: Yep.
Kristen: Um, and then basically, if you're choosing to use virtual marketing, the web address must be public without charge, like I said. And if it's not feasible to mark on the patent, or I'm sorry, on the [00:21:00] product due to size, you can do the package or label, like I said. And if words are printed on that product though, remember that you have to actually put the patent number or the web address.
On the product. If you're choosing to physically mark, right, and I, I'm saying this again because it is a little bit confusing if you're doing a combination of virtual and physical. But if you're choosing physical marking and you have a product that has words on it and it's big enough to put this content on it, you should put this content on it.
If you're choosing physical marketing or marketing, if you're choosing virtual marketing, you do not have to do that. You can do the virtual marketing.
So, um, example
website here, this is what Dave was asking for. So this is some language that says, okay, this is how you virtually patent mark. Following articles are protected by patents in the US and elsewhere.
This page is intended to satisfy applicable virtual patent marking requirements of [00:22:00] various jurisdictions, including those of the A i A. And to provide notice under this 2 87 a statute. And then the following list of products and patents may not be all inclusive, so, uh, that may not be all inclusive.
We'll cover you from not breaking out each little piece, but if you can see on the left hand side, they have one product, one, and they give several patents. And they do have a patent pending here on a particular one. That's okay to list in this site, but it's not going to help you for, uh, constructive notice purposes for whatever is patent pending here.
Product two has is some sort of trademarked product and it, it goes to, looks like two US patents and maybe a US design patent. And Product three, which is a registered patent here, it, it got patents that are covered in China, Australia, and it's got some other patent pending. Um, honestly, patent pending is not something I would always [00:23:00] put on here.
You may want to put actual, um. Actual numbers to the publications if they're public only because you may want this to function as something that helps people not infringe. Again, patent pending will not help you for damages and it constructed notice purposes. And
Ashley: well, the other argument I could see too, for not putting patent pending or putting a serial number that's not a PE patent is that, um, it ruins any potential stealth period that you may or may not have if people can't find the other ones or, you know, obviously if it's not published, you shouldn't be putting it on there.
Um, so I do think, you know, or you're not sure the trajectory of prosecution and so you'd rather leave it more open-ended and not have people, you know, in case you don't get as strong of a, a case strong of a patent on a, on a product at some point.
Kristen: Sure. All those are good reasons to leave that just [00:24:00] completely off.
Um, I. I'm okay with, with inventors and owners wanting to put patent pending on items and, and making that as kind of an interesting thing on a product. But when it comes to software, there's so much that can change and there's so many things that could happen where you end up with an extremely narrow claim that you don't love and you probably wouldn't assert.
Um, so you wouldn't wanna put anybody on notice of that, you know, to say, Hey, here's what we're doing. And it, to be honest, it helps people that are not, you create their ideas and products and software products to be improved because they can see how you could not get around something or how you had to amend something.
Um, I'd really like to leave that to the farthest latest after publication or at, you know, when it's available publicly. I, I do not like to share those details
external to the client if, if we can help it.[00:25:00]
Okay, so more best practices, but this time, this is for
software. So this is a big one because people always ask, well, how? How do I mark my software? Do I copyright my code? Do I do this? Do I do that? So at this point, if you have code that you do know is very interesting and new in the market, do copyright your code.
But often if you have to make a choice, it is often much better to get the patent rather than the copyright, because the patent is going to give you better rights and more rights and broader, right? I would say they're different rights, but they're broader. So basically, you virtually Mark patented software on a webpage, just as I've shown you, specifically generated for virtual markings in the same fashion as you would virtually mark physical products.
And it's the same requirements to map the product to the patents on the webpage. But it has also been found [00:26:00]appropriate in some cases to Mark patented, um, patented software on the UI of the product. So if it's a graphical user interface or an application product, you can mark it in there, but it's really not best practice because some courts may actually resonate with an argument that the markings are not easy to locate or public or, or, you know, if you had to purchase the app, they're under a purchase agreement and they may not provide the constructive notice you want.
So it's best to actually use the patent marking website and not just rely on something in the user interface. Um, so it is important to actually note any ambiguity on the webpage containing the virtual marks can render the markings and proper, and so you wanna be really careful with how you mark and making sure your numbers are correct and that you've mapped to the right products.
Um, if there are any updates to the patent. Also, you wanna make sure to update timely and often on that webpage. So if all [00:27:00] of a sudden something has a continuation that issues in the family, it's also covered by the product, you wanna get that added in as soon as you can. Um, so lastly, failure to Mark could open the door for potential infringers and it could force patent owners to lose out on past damages.
So you just wanna make sure you mark, you wanna make sure you mark correctly. And as long as you're doing that mapping correctly and then following the guidelines to, to present it on a webpage
appropriately, you're, you're probably gonna be fine.
Okay, so here is back to Ashley's question and she said, Hey, what's the
difference if I'm marking method claims as opposed to system or device claims? So the courts actually have held that method. Claims create no marking obligation because it is not possible to mark a stepper action performed in accordance with a patented method.
So there's case law on this. It's very well known. You do not have to mark method claims, you know, or method [00:28:00] patents only. But if software is covered by an apparatus or a system claim, the software should be marked to the extent that there is a tangible item to mark as well. But also, um, I would mark this virtually on a webpage because you literally have a software product that maps to, um, a, a patent or to, and then if the software is actually covered by a computer readable medium claim, then it is likely best to mark.
Spot not necessary. However, it would be very easy to go ahead and mark your computer readable claim as well, or mark your patents that have computer, computer readable claims. Because in some jurisdictions and in some ways, a computer readable medium claim can function with rights and infringement rights and protection rights as a system.
So you wanna be careful. I would recommend just marking them. Um, case law [00:29:00] says it's best to mark them. So really, the methods are the only ones that are, you know, exempt from being marked on your pages. Uh, one interesting note for litigation. For patents containing both apparatus and method claims. A patentee can still avoid marking requirements by asserting only the method claims in litigation, so you can still get your damages appropriately handled back to your, your first known construction notice.
And that could be years before you bring a suit, right? You might actually have something for an apparatus claim that you forgot to mark, but you also had method claims in there, and so you can go after somebody infringing your method claims and the marking statute doesn't apply there.
Ashley: From a strategy perspective, I think, you know, I think there's value that I'm thinking about.
I know a lot of times we try to get apparatus and method all in the same patent, right? Where it's like, yes, I have a system and now I can just [00:30:00] make it a method. I think there's something to be said for considering splitting those up then, so you have some patents that are fully. You know, separate from marketing requirements and others that are very much tied to it.
Yep. Absolutely. Point, maybe not critical, but I think it creates a really clean line.
Kristen: Okay, so virtually marking partially covered software. So you know what if a product is actually only partially covered by some portion of a patent claim, so you can use these statute like for use under US patent, blah, blah, blah language in your, in your marking strategy.
This. Tells people that, okay, it doesn't map directly, but there are aspects of it in there. Um, and the, and the way you kind of think about this and how you're gonna mark this and how you're going to go after claims is you consider downstream intended uses of the product. If, if as a patent owner, owner, you actually anticipate that these products will be combined with other components [00:31:00] and that resulting combo would meet all elements of the patent owner's claim, then the patent owner should mark the product for use under and or contractually requires customers to mark the product with the patent number.
And I would say, I would argue, do both. You know, if, if, if in doubt and it's partially covered, you know, you could put more notes in there if you wanted it very clear. But as long as you're using for use under us patent, blah, blah, blah, that is kind of enough clarity to understand that it, we aren't doing a direct mapping here, but there are aspects that we want
covered and, and used as notice.
Okay, so false par false patent marking is
high risk and it includes using patent numbers without authorization. Um, marking products not actually covered by the patents listed. So there's where you can make an error on your marking page inadvertently, uh, stating patent pending when no application is pending.
And then [00:32:00] any intent to deceive can still expose the company to fines and civil claims. So you wanna just be careful not to deceive, um, and not to just lie or put something in a presentation that isn't quite true. Right? Patent pending is almost always going to be true if you actually have an application on file and it will cover
you until you need to mark.
Okay, so here is a case law and a cautionary
tale.
So Arctic Cat versus Bombardier. Um. This was a snowmobile case where Fed Circuit clarified that the IM impact of failure to mark products on the actual recovery of these pre-suit damages. Um, if your patent holder, patent holder fails to mark its own products, it cannot recover damages for infringement that occurred before the filing of the lawsuit, unless the alleged infringer had actual notice of the infringement.
So you had to have [00:33:00] sent a cease and desist. You had to have sent a message of some sort, an indication that you have these patents. If you didn't do the marking, if you just decided, I'm not going to mark my patents right. Um, and also note this one other error that could occur here, um, substantially. All products need to be marked.
So if you have a product that has 10 patents substantially all. Let's say you have two products that they're covered by 10 patents and you only list one, you really could get into trouble here because the, the wording of the language and the statute is substantially all products must be marked with the particular patents.
And the courts have actually gone between saying things like 95% compliance to this, where you have 95% of your products marked appropriately will pass, but 77% will fail. So you wanna be really careful to just keep it up and keep, keep your marking website up [00:34:00] as you get new patents. Um, and one thing for practice, I wonder, we do not send out notices and we do not have, um.
What I would consider docketing notifiers that say, Hey, let your, let your client know that marking should occur at issuance. I think we say a couple line items in like a notice of allowance, but maybe we could pull that up to the front forefront a little bit just to help our clients.
Ashley: Yeah. It might not hurt to, um, could be interesting to kind of create a, create our own marking webpage that we could point clients to for, you know, where you could include in our like issued patent letter.
And then we'd have, you know, an attorney review the marking page too to see if they agreed with our advice. And then you could just point 'em to it and say, if you want some advice on marking, you know, go to this blog or this part of our website and you can have some instructions that might be kind of interesting.
Yeah.
Kristen: And, and we will, so this will go up on IP watchdog [00:35:00] with a writeup and some interesting tidbits, but it'll also go up as a post in a different fashion with a little bit different wording on our internal Aurora blog site. So there'll be two posts I think we could play with either of what you're saying,
Ashley, and, and figure out what else we want in there.
Okay, so in this case though, although the case did not
directly address a, a scenario where the license agreement explicitly exempts the licensee from marking obligation, it underscores the importance of complying with marking requirements to secure the ability of to claim past damages. So let's say the 95 and 77% that I showed you before, let's say 95% applied to the actual patent owner, and 77% applied to what your licensees were doing.
So you get pulled all the way down to that 77%, you know, or some combination between 77 and 95 because your licensees weren't marking appropriately. And so the court's logic here is, [00:36:00] Hey, you know, you as a patent owner, you have to police your licensees marking compliance. And it's difficult because.
Sometimes you license to enough people for enough products, and I'm sorry, enough, um, patents that you can't keep track and, you know, maybe your legal team kept track, but maybe you lost the two folks on your legal team who had a clue about that client. You know, so it can, it can fall apart pretty quickly.
So, just tips and tricks for patent prosecutors here. Uh, draft US licenses with explicit licensee marking duties because of this Arctic Cat case. Uh, consider virtual marking strategies for complex product lines, so it's a little cheaper. You don't have to update molds, update, you know, etchings, any of it, and advise clients on jurisdiction specific enforcement strategies.
So here you might actually say, Hey, it would be best to bring your German patent into this case in Germany, because you have more issues in Germany than you do in the [00:37:00] United States and the United States. You forgot to mark. Right. So your German case is a stronger case. So there's things like that you can do and it's really client dependent and it's really jurisdiction dependent too.
But you can still think about how you would advise clients, uh, and for in-house council budget enough to, to meet US marketing compliance programs. You know, this isn't a lot of effort once it's up and going and, or if you started from the beginning. But if you started in the middle of your, you know, 50 patent portfolio, this is gonna take some time for people to pull apart and put together.
Okay. And then develop licensing, monitoring systems to avoid arctic cat disasters. So this is where I said it's probably pretty good to put the licensee, uh, obligations to mark in their actual contract and to follow up. So if you can get. A system or a protocol or a process down for that, I think you'll be leaps and bounds ahead.[00:38:00]
Um, and then consider foreign filing strategies that bypass US marketing complications. And for that, this is kind of interesting. I, uh, Ashley sent me an article that was kind of cool that showed, uh, the Arctic Cat case and some around the world stuff like what they do around the world with patent marking.
So for Europe, there's no marking requirements. They basically create and decide damages and infringement on different basically. And then Germany, there's no marking requirements, but damages can calculate from the infringement date regardless of the marking. But marking can be done to like avoid, avoid unfair competition or reduce damages in other, uh, infringement cases that are kind of related though it is a clarity piece in Germany where it wouldn't.
Hurt if you wanted to mark your German content as well. Um, and the, the UK recognizes virtual marketing. Uh, I keep saying marketing, I apologize. [00:39:00] I think I wanna go into marketing. Um, so the UK recognizes virtual marketing, but limited practicality. And the exception in the UK is they have this innocence defense when someone uses a patented invention without knowing about the patent.
But the infringer has to prove their lack of knowledge. So that can be difficult. And then France and the Netherlands, they have no marketing requirements, but similar to Germany, you can mark the unified patent Court has no marking requirements yet. So damages are figured differently for these guys and China and Japan.
Marking is optional and in China and Japan, damages can be, um. A multitude of things, but they're almost never based on marking. It's almost always based on some sort of constructive notice of another kind. And then Canada, they have no marking requirements and they vehemently reject the US policy. They find us ridiculous.
They're like, that's just dumb. That's where you, it was ridiculous. There should be an
Ashley: owner, some [00:40:00] people to do their, their homework like Europe of, you know, the expectation is that there is a patent system and you should look at stuff.
Kristen: Yep. Okay. That's it. Thank you for listening to, uh, do you have any questions?
Nice job.
Dave: Yeah, thanks Kristin. One, I, one maybe quick question is, like, on the software case, where would you, what are your options for where you would list the website that has all of your patents?
Kristen: So if you do not have a company website where you have just all of your contact information and, and your product listings, then I would create my own website That actually is kind of a product d sort of, um, a product combination or a company combination for patent marking listings.
But most people are willing to make their own company website. Um, others have only put it within the UI itself, and they have shown. [00:41:00] Problematic occasionally, and they're not easily findable. Um, and also if you have a paid app, you're going to only see those virtual marking things if you pay for the app, which is not a public disclosure of like content you could find publicly and for free.
Dave: Right. So what, how do you point people to those webpages? I mean, like, so if someone's downloading software, they go to a download page, is there somewhere on that download page that says that that's where it's marked, that this product is covered under patents, go to this URL?
Kristen: So I'm not sure if that would result in constructive notice because you kind of have to go through rigmarole.
To get there. It's not clear, it's not concise, it's not easy to find. Um, I would recommend against that, and I would literally either create the site you need for your product or for your company [00:42:00] or understand that you're not going to be dealing with infringement cases and being sued or suing others. Um, so if it's a non-issue for you and you went and got a patent just to get a patent, this is not a big deal and you don't have, maybe I can ask
Dave: the question in a different way.
So if I'm selling a, um, blender and I put on the packaging of the blender, uh, my company is blender us and I say www do blender US patents. So now it's on the packaging of the blender. It's marked. Yeah. And then, uh, you go to the webpage and all the things are listed. If there's, if you're buying software at the store on a cd, whoever does that anymore, um, there could be a package and you could do the same thing.
But if you download, if you go to a website and download a software, and now you have the software, where's the packaging that you put, that you point someone that you market, you know [00:43:00] what I mean? Mm-hmm.
Kristen: So, so the, you're, you're mixing physical with virtual, which you can do, but if you're virtually providing constructive notice, there's no requirement to tie the physical product, image and packaging or anything.
You don't have to put anything on that if you are choosing to do virtual. And if you're choosing to do virtual, it just has to be publicly available and free.
Dave: Okay. So you don't have to point anyone to that webpage. The fact that the webpage is up Yes. And. There existing. I
Ashley: thought that's enough. So there's like no need to put it into like a user agreement or anything like that.
So it's
Kristen: best to do both so that it's easier to find, but if the only place you put it is in a user agreement, then you really may not have your user looking at that anyway. Um, as far as I understand, if you have [00:44:00] software and you have patents that cover it, as long as you have a website listing the mapping, you have covered the statute.
If you are mixing, if you are putting something on your physical device and you only list one of them, so you're physically mapping, marking and you're doing this virtual marketing website, that can be confusing. Because you're not listing everything, so you would, when you say
Dave: physical marking, you don't mean just a pointer to the website, you mean a pointer and then these patents are actually covered here?
Kristen: Yes.
Dave: Yeah, but I mean, if you have just a pointer to the website, is that, that's not required, but is it and and is it problematic
Kristen: that covers it? No. If if you have packaging of your software, you have packaging of your device and you put on there PATS period, and then you put the website that does all your virtual marking, that's appropriate.
You can do that,
Dave: but you don't have to. You're saying [00:45:00]
Kristen: you do not have to because you know, if. If you are choosing to do virtual marking, and it depends on if you have a product or you have software, right? It's a little bit different. But if you're choosing to do virtual marking, which a i a says you can now do instead of physical, you just go all virtual.
And, um, but the thing is, if you have a product large enough to have other words on it, they do want you to put that physical website or the physical patents that are covered. So whichever. So it's very strange because for software that's not the case, but for articles it kind of is the case. If it's big enough and you have other words on it, you're supposed to put these other markings.
Ashley: I definitely think it's best practice to, even if you're like virtually marking to mark something physical, I think that would, you know, just based on what I've seen in the industry, best practice is to, to do both. Like really cover your bases.
Kristen: And it's easiest [00:46:00] and cheapest to put paths and then the website, because otherwise you're gonna be updating and upgrading constantly.
Yeah.
Marie: So one other, uh, thing I wanted to mention, 'cause I went through this with a client, um, you can say pen pending if you have a provisional application.
Kristen: Yes. You can
Marie: always made me think, but yes you can. So, um, particularly for this particular client, 'cause they're small and are kind of, um, money constraints and also still in their development stages, um, it helped them to put that on their website that they were patent pending.
Kristen: Mm-hmm.
Marie: Basically after filing one provisional application.
Kristen: So yes. Um, but it will not function for constructive notice.
Marie: Oh yeah, it won't. So that, so if that patent is converted to a, um, from provisional to non-provisional. Within the appropriate timeframe and they put patent pending on their [00:47:00] website when it was a provisional, will it go back to the, um, original priority date if there were issues?
Kristen: You can only get damages after issuance, so you can't pull a suit.
Ashley: Was, isn't there some loophole though, where if you mark patent pending and it's published and the published claims are substantially the same as the issue claims, you could in theory get damages back to Oh, application or some, I, I mean, there are some,
Dave: there are some.
I'm not an, I'm not an attorney and I, there are some, there are some carve outs. So I, from what I understand, you can get, um, you can get royalty type damages, but not lost revenue type damages in certain scenarios. And so it's complicated, I think.
Kristen: Yeah. Okay.
And that's interesting. That's why I tried to keep this to just marking because there's so many other things that could pop in here and, and, you know, be [00:48:00] problematic
or beneficial for your inventor.
Ashley: Well, the only thing I, you know, kind of, sort of tangentially related, that's kind of like a more recent, um, you all have probably heard about this, is that I was thinking about notice and then, you know, the, the typical response to somebody when they're accused of infringement is to do a post-grant.
Proceeding right to file an IPR an inter parties review. It's interesting, um, the, the acting director, Koch Morgan Stewart has actually now said that if I am an infringer and I cited your stuff in an IDS and then I waited for several years until I got an infringement notice to then file an IPR, they're going to discretionary denial the IPR because I was aware of it several years ago.
And if I thought it was a bad patent, then why didn't I do anything then? So I think that's really interesting and kind of again, encourage, you know, from both sides of it, encourage, you know, what, what you talked about today encourages people to, you know, mark their stuff when appropriate and soon. But on the other side too, it's [00:49:00] like, you know, these big players, you know, you're monitoring stuff 'cause I know you are like, you might have to, you know, it'd be interesting to see if you see more proactive IPRs, um, from some of the bigger players.
Yeah,
Kristen: we'll see. It's, it's, you know, it's a cheaper thing than litigating, but the, what I've seen these days, people do both and they do them almost in t in, in like tandem. And then they also, um, are not getting the cheap, cheap IPRs of the past. Right. These, these are really, really large documents and very heavily.
That's real
Ashley: positioning too. Yeah.
Kristen: Yes. Yep.
Ashley: Thanks everybody. Have a good week.
Kristen: Take care. Thank you. Bye. Thanks. Bye
Ashley: bye.
Kristen: Bye.
