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Intellectual Property Alert: A new way to mark your patents: Virtual patent marking

Before the recently enacted America Invents Act (AIA), a patent owner would mark their product with the patent number of the patent covering the product. The old law required patent owners to place the patent marking directly on the patented product, or in some instances, on the product packaging. The problem with this approach was that patent owners had to constantly monitor — and change — their products to identify different patents as they issued or expired. This has been a tremendous strain on companies that have a number of patents covering a product.

The AIA has simplified the patent marking process. Now, instead of constantly having to change the marking on a product, the law allows patent owners to “virtually” mark their patents on the Internet instead of on the product. Virtual marking permits a patent owner to mark its product using a website Uniform Resource Locator (URL). That URL would provide a list of products and the patent covering those products, i.e., patents that have at least one claim that covers the product. The AIA requires that the applicable website be accessible to the public at no charge. 

To virtually mark, the product must be marked with either “patent” or “pat.” and the applicable URL instead of the patent numbers themselves. For example, pat.: http://patent.company.com or patent: http://patent.company.com may be placed on the product. If the product is too small, the URL may be placed on the product packaging. The website must identify the product marked along with the patent number covering the product. Beyond that, there are no specific requirements as to the form this must take.

The potential upside to virtual marking is tremendous. Patent owners no longer need to worry about constantly changing labels, dies or imprints on products to mark their products with the appropriate patents. Instead, patent owners simply mark their products once — with the URL — and then easily change the content on that website as patents issue or expire.

If you have any questions or require further clarification, please contact:

Todd A. Benni

Intellectual Property

It is critical in today’s technology-driven, global marketplace to effectively procure and manage intellectual property. Our clients rely on us to provide prompt, thorough and efficient counsel on matters involving patents, copyrights, trademarks, trade dress, trade secrets, intellectual property procurement, and enforcement. We focus on management and enforcement for Fortune 500 companies, mid-cap companies and start-ups. Supported by the talents of our litigation and business law attorneys, our IP attorneys deliver a complete range of innovative and comprehensive solutions, as well as insightful industry expertise. Our in-depth approach enables us to meet the business goals of our diverse client base. In fact, the hallmark of our IP practice is to dovetail our clients’ intellectual property needs with their business plans and strategies, presenting a cohesive and thorough outcome.

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© 2012 McDonald Hopkins LLC All Rights Reserved. This Alert is designed to provide current information for our clients, friends and their advisors regarding important legal developments. The foregoing discussion is general information rather than specific legal advice. Because it is necessary to apply legal principles to specific facts, always consult your legal advisor before using this discussion as a basis for a specific action.