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Don’t Forget About Virtual Patent Marking

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One of the actual benefits of the AIA to inventors and patent holders was the creation of virtual patent marking.  Virtual patent marking allows the patent owner to mark its products by posting the patent information on a website, rather than on the product itself.  Virtual patent marking allows the patent owner to quickly add new patents as they are issued thereby preserving the ability to collect damages for infringements before suit is filed.  Virtual patent marking also allows patent owners to remove patents as they expire or their scope changes, thereby avoding liability for false patent marking.

35 U.S.C. 287 requires:

Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or 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, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.

A patent owner can thus take advantage of this method of marking by putting a simple reference to the website on the product or, if appropriate, the product package:

Patent: www.company.com/patents

Pat.: www.company.com/patents

The website must “associate” the patented article with the number of the patent.  This can be done in a number of ways.  Some websites list the products in a table with the corresponding patent numbers.  See, for example Tivo’s site: http://www.tivo.com/legal/patents or Symantec’s site: http://www.symantec.com/about/profile/policies/virtual_patent_marking.jsp or Rapidscan’s site:  Other websites provide an index with links to seprate product pages.  See, for example, Abbott’s site: http://www.abbott.com/patents/vision-technologies.htm.  Still other webpages link to a single or to multiple .pdf listings.  See, for example, Bunn’s site: http://www.bunn.com/pdfs/misc/BUNN_Patent_List.pdf; Hill-Rom’s site: http://www2.hill-rom.com/usa/PDF/Patent_20120609.pdf, or Kimberly Clark’s site: http://www.kimberly-clark.com/ourcompany/innovations/patents.aspx.  Finally, some websites provide a searchable index.  See, for example, St. Jude Medical’s site: http://patent.sjmneuro.com/Public.

 

 

Ownership of Inventions

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A critical component of IP Management is the acquisition of IP.  It is therefore appropriate that the inaugural post of this blog addresses acquiring ownership of inventions — in this case employee inventions.  An employer does not automatically own the inventions or its employees merely by virtue of the employer/employee relationship.  The employer only owns inventions that the employee has agreed to assign.  Sometimes this agreement is implied, for example when the employee is specifically hired to invent or is later assigned the task of inventing.  However, most times agreement is express.  Such an agreement can be oral, but as the saying goes, oral contracts aren’t worth the paper they are printed on.  An agreement with an employee to assign inventions should be in writing.

What should this written agreement say?  After Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 583 F.3d 832, 842 (Fed. Cir. 2009), we know that an agreement to assign, is just that — an agreement to do something in the future.  Such an agreement can be trumped by an automatic assginment.  Thus is seems prudent to combine a promise to assign with a present assignment:

I agree to assign, and hereby do assign, to Employer all right, title, and interest in and to the Inventions.

Of course, this leaves open the question of what is an “Invention,” but that is a topic for another pose.