Article by: Larry J. Guffey, Esq. and Pamela K. Riewerts, Esq.
A patent applicant who seeks the benefit of marking an article as “Patent Pending” must make a good faith effort to ensure that the articles are properly and consistently marked. An effective way to do this is to mark the article as “Patent Pending”. Use of this notice alerts the public that your article may soon be patent protected and that once a patent is issued, you have the right to initiate a patent infringement lawsuit against someone who is potentially infringing on that patent and wherein you seek monetary damages or other remedies for the copying, etc. of your patented article.
An applicant may only mark an article with “Patent Pending” once a patent application is filed with the Patent Office. It is also pertinent to note that it is a criminal offense to mark or offer to sell an article as “Patent Pending,” when an application for the invention has not yet been filed.
In deciding how and where to mark articles as “Patent Pending”, a patent applicant should be mindful of the purpose of giving public notice and also use common sense. For example, patent markings may be formed directly on the “Patent Pending” article by etching, molding, or printing, or if you are unable to place the marking on the article itself due to “the character of the article”, the notice may be provided on any packaging of the article, including the box and enclosed packaging papers, or marketing and promotional materials. In addition, there may be particular challenges that a patent applicant or patentee endures to properly mark an article. For example, often times, labels may fall off of the articles in transit, etc. The courts generally follow the “rule of reason” approach to hold that constructive notice is achieved when the patent applicant or patentee consistently marks substantially all of the articles.
Once a patent has been issued for the invention and you are a patentee rather than a patent applicant, the marking on the article should be changed from “Patent Pending” and instead be marked with the patent number and marked in the following manner: e.g., “U.S. Pat. No. X,XXX,XXX”, where your patent number is inserted therein. Examples of the proper use of this patent number marking can be found on the products and packaging of many reputable manufacturers.
More recently, the America Invents Act (AIA) allows patented articles to be marked “virtually” by using the internet. In order to comply with virtual marking requirements, the owner must mark the article itself, or the article packaging if it is not possible to mark the article, with the word “patent” or “pat.” along with a freely-accessible, internet address where one can find the patent numbers applicable to the patented article. Virtual marking provides certain advantages including aesthetic appeal as well as being able to easily update and identify later issued patents relating to the article without having to remark the articles individually. Instead, only a revision to the website page is needed. Examples of virtual marking via internet webpages may be found here: Examples of Virtual Marking
Please note that we recommend consulting with a patent attorney before moving forward with any marking or notice provisions.
Disclaimer: The information provided in this article is not legal advice. It cannot be such since legal advice must be tailored to the specific circumstances of each case, including the consideration of federal law and jurisdictional law that can vary greatly from state to state. However, it is hoped that the information provided above will be helpful in familiarizing
its readers with issues that may affect them.