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09-10-2012 » Patent Marking

"U.S. Pat. 6,267,346", marked in small characters and molded on the bottom of a document holder.  "U.S. Pat. No. 6,666,420", this mark appearing on a suction cup of a GPS navigation unit.  In the United States, while not mandatory, patent marking - i.e., marking of a product that is patent protected - is strongly recommended.1
 
However, for a company, it is not always easy to mark each of its products with each patent number protecting the product.  Moreover, it can be difficult to keep the markings up to date as a product evolves over time and the patents associated therewith may change.  Clearly, in order to be effective the markings must take into account such changes.  On the other hand, U.S. law condemns false marking, and such false marking can present certain risks.2
 
In practice up until a short time ago, U.S. law provided for only one type of marking: the patent must have appeared on the product or its package in the format “Patent” or the abbreviation “Pat.” followed by the U.S. patent number or numbers covering the product.  The recently enacted America Invents Act (AIA) has revised U.S. patent law3 and has created an alternative marking called “virtual marking”. Under the “virtual marking” regime, the word “Patent” on a product may now be followed by an internet address of a page listing the patents protecting the product.4  Product markings such as “This product is covered by U.S. patent(s). See 'www.company.com/patents' for details” have already started appearing in the marketplace.
 
Because virtual marking should be easier to update, it should be popular particularly because patent owners will no longer be required to change product labels, packages, and molds for their products as circumstances change.  Certainly one can therefore expect that the objective of encouraging marking of patented products will be attained and that this new type of marking, based on its practicality, will begin to appear elsewhere in the world.
 
It is worth noting that in France marking of patented products is not regulated or mandatory, and the law provides no particular format for providing such product markings, as in the U.S.  However, it is still important to ensure that a product is not falsely marked or otherwise incorrectly indicated as being covered by a patent.  This is true because such marking errors may notably give rise to a charge of unfair competition.  This was noted in two decisions of the French Court of Appeals in 2011 5.
 
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[1] Without such marking, a patent owner may not recover damages for the time period prior to the accused infringer having notice of the patent at issue.  35 U.S.C. § 287(a).
2 However, the laws related to false marking have recently been relaxed by the America Invents Act (AIA). 35 U.S.C. § 292.
3 Certain provisions of the AIA became effective at signing on September 16, 2011, others on September 16, 2012, while still others will become effective as of March 16, 2013.  The provisions related to virtual marking became effective as of September 16, 2011.
4 35 U.S.C. § 287(a)
5 Lyon Appeals Court, July 13, 2011, Cycles Lapierre et Phillipe L. v. Décathlon et Promiles ;  Paris Appeals Court, December 2, 2011, Antonio O. et Valgraf v. Alpem.    

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