{"id":353,"date":"2017-12-09T11:52:31","date_gmt":"2017-12-09T16:52:31","guid":{"rendered":"https:\/\/ipmanagement.harnessip.com\/?p=353"},"modified":"2017-12-09T11:52:31","modified_gmt":"2017-12-09T16:52:31","slug":"the-marking-requirement-is-alive-and-well-dont-forget-about-virtual-marking","status":"publish","type":"post","link":"https:\/\/ipmanagement.harnessip.com\/?p=353","title":{"rendered":"The Marking Requirement is Alive and Well; Don’t Forget about Virtual Marking"},"content":{"rendered":"

The Federal Circuit recently faced a patent marking issue in\u00a0Arctic Cat Inc. v. Bombardier Recreational Products Inc.<\/a>, [2017-1475] (December 8, 2017).\u00a0 In that case, the patent owner Arctic Cat had previously licensed the patents in suit to Honda. The license agreement with Honda\u00a0specifically stated that Honda\u00a0\u201cshall have no obligation or requirement to mark\u201d its\u00a0licensed products.\u00a0 While this provision no doubt made sense to Arctic Cat at the time, it put at risk the damage award against accused infringer Bombardier for the period of time before Arctic Cat received actual notice of infringement.<\/p>\n

The Federal Circuit held that\u00a0an alleged infringer who challenges the patentee\u2019s\u00a0 compliance with \u00a7 287 bears an initial burden of\u00a0production to articulate the products it believes are unmarked\u00a0\u201cpatented articles\u201d subject to \u00a7 287. Once the alleged infringer\u00a0meets its burden of production, however, the patentee\u00a0bears the burden to prove the products identified do not\u00a0practice the patented invention.<\/p>\n

Compliance with the patent marking statute can be difficult because the patent owner may have to change the molds or other equipment used in manufacture as the patent issues, and again as the patents expire or are invalidated (lest the patent owner be accused of false marking).\u00a0 This obligation also extends to the patent owner’s licensees, but it is easy to understand why a licensee, such as Honda in this case, would not want to be bothered with marking.<\/p>\n

 <\/p>\n

However many patent owners appear to be unaware that the AIA made it easier for patent owners (and their licensees) to comply with the patent marking requirement.\u00a0 While it could not have helped Arctic Cat and its licensee Honda in their pre-AIA license, amended \u00a7287(a) now allows the patentee to mark by \u201cfixing thereon the word \u201cpatent\u201d or the abbreviation \u201cpat.\u201d 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.\u201d\u00a0 Thus when patents issue or expire, a patent owner simply has to update a website \u2013 not change molds or printing plates.<\/p>\n

A Report<\/a> to Congress on virtual marking in 2014 concluded that \u201cvirtual marking has likely met its intended objectives of reducing manufacturing costs and facilitating public notice in certain situations.\u201d\u00a0 This assessment was probably correct, but virtual marking remains under-utilized.\u00a0 Among virtual markers, some provide online lists:<\/p>\n

TIVO: www.tivo.com\/patents<\/a><\/p>\n

Nanoleaf: http:\/\/nanoleaf.me\/patents\/<\/a><\/p>\n

Densify: http:\/\/www.densify.com\/company\/virtual-patent-marking.htm<\/a><\/p>\n

Arthrex: www.arthrex.com\/corporate\/virtual-patent-marking<\/a><\/p>\n

Hill-Rom: http:\/\/www2.hill-rom.com\/usa\/PDF\/Patent_20120609.pdf<\/a><\/p>\n

\u00a0Actifio: https:\/\/www.actifio.com\/patents\/<\/a><\/p>\n

some provide a downloadable list:<\/p>\n

Bunn: www.bunn.com\/patents<\/a><\/p>\n

some provide lists for individual products:<\/p>\n

Kimberly Clark www.kimberly-clark.com\/patents<\/a><\/p>\n

and some provide a searchable database:<\/p>\n

St. Jude Medical: http:\/\/patent.sjmneuro.com\/Public<\/a>.<\/p>\n

Virtual patent marking is one of the few benefits of the AIA, but inventors and their assignees do not appear to be taking advantage of it.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

The Federal Circuit recently faced a patent marking issue in\u00a0Arctic Cat Inc. v. Bombardier Recreational Products Inc., [2017-1475] (December 8, 2017).\u00a0 In that case, the patent owner Arctic Cat had previously licensed the patents in suit to Honda. The license … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-353","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"_links":{"self":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/353","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=353"}],"version-history":[{"count":1,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/353\/revisions"}],"predecessor-version":[{"id":354,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/353\/revisions\/354"}],"wp:attachment":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=353"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=353"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=353"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}