USPTO Virtual Marking Report: Too Early for a Full Assessment

35 U.S.C. § 287 precludes recovery of damages for infringement prior to providing notice of infringement for unmarked products. The America Invents Act (AIA) amended Section 287(a) to recite that in addition to constructive notice via physically marking a product or its packaging with a patent number, notice may be virtual by “fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent.”

As directed by the AIA, the USPTO issued its September 2014 “Report on Virtual Marking,” addressing four issues:

(1) The effectiveness of virtual marking as an alternative to physical marking. Noting a lack of empirical data, the USPTO believes that virtual marking may have advantages over physical marking, particularly where there is a need to update the marking or the products are small.

(2) Whether virtual marking has limited or improved the ability of the general public to access information about patents. Whereas physical marking provides immediate access, virtual marking requires internet availability. Requiring internet access also raises privacy concerns because websites may require or simply record personal information, such as IP addresses. On the other hand, virtual marking can be updated in real time, improving public access to current information. In addition, websites permit additional information regarding products and patents to be made public.

(3) Legal issues arising from virtual marking. The USPTO noted that only one court has addressed virtual marking, finding that providing a website without “patent” or “pat.” was insufficient notice under Section 287(a). The USPTO also addressed issues that may be applicable to virtual marking such as the patentee’s burden of proof and evidentiary requirements to demonstrate constructive notice. For example, it is unclear how virtual markers will establish the “substantially consistent and continuous” requirement if the website experiences technical issues.

(4) Deficiencies of virtual marking. Based on its own search of virtual marking websites, the USPTO noted that they were not product specific and applied a variety of schemes to “associate” products with patent numbers. The USPTO suggested that a standard format be developed to assure that the statutory requirement is met. The USPTO also noted a need to educate the public about virtual marking.

In sum, the USPTO found that virtual marking has likely met its intended objectives despite its deficiencies, but noted that more time is needed for a true assessment. The USPTO concluded that it may be beneficial to revisit this issue at a later date when there is more empirical data to rely upon.