Wanted: a standard for virtual patent marking
Gaétan de Rassenfosse, Kyle Higham · Journal of Intellectual Property Law & Practice · 2020
Gaétan de Rassenfosse is Assistant Professor at École polytechnique fédérale de Lausanne (EFPL) in Switzerland, where Kyle Higham is Postdoctoral Researcher. Virtual patent marking has been introduced in the past decade in the USA and UK to offer patent owners a more convenient way to mark their products. However, uncertainties concerning the practicalities of using such instrument (including the formatting of the relevant webpages, their availability, archiving, etc.) have limited its adoption so far. This article maps key unresolved issues, against the background of the US legislation and of recent cases and academic literature, making the case for the development of virtual patent marking guidelines to address existing privacy, technical and legal concerns. It also reviews the current state of virtual patent marking webpages, finding that the probability that a virtual patent mark be invalid ranges from 27 per cent for marks that are less than one year old to over 40 per cent for those that are three years old. In light of this analysis, the authors develop a set of standard guidelines accompanied by policy-making suggestions, aimed at allowing virtual patent marking to find widespread adoption, ensuring its compliance with the applicable legal frameworks. Patent marking has a long history in the intellectual property (IP) laws of many jurisdictions. In the USA, for example, the marking statute has remained in roughly its current form for almost 100 years.1 A patent mark is a form of ‘constructive notice’—in short, a way to make information regarding the existence of a patent readily available such that a reasonable person will easily find this information through ordinary care and diligence.2 Patent marks, therefore, prevent potential infringers from claiming they were unaware that they were trespassing on someone else’s intellectual property. This unintentional infringement defence could otherwise limit the recovery of damages.3 Marking a product allows right holders to claim damages back to the time when either the infringement or the marking began (whichever is later),4 rather than from the time the infringer received formal notice. Historically, marking a product required the manufacturer to write the relevant patent numbers on the product or packaging, but the past decade has seen a fundamentally new kind of marking gain popularity. First introduced in the USA via the America Invents Act (AIA) of 2011, and implemented the following year, virtual patent marks (VPMs) offer patent owners a more convenient way to mark their products. However, this legislative change comes with a significant amount of confusion as to how to use VPMs and ensure their functionality, and those wanting to do so must grapple with many new questions that simply are not of concern when using traditional marking. Furthermore, answers to these questions, when answers exist, are often not straightforward, and the legal community has promoted caution and forethought before deciding to make use of VPMs.5 We argue that the adoption of VPMs has been slow as a result. A standard would provide clear guidance on the way VPMs should be formatted in order to avoid both the known pitfalls and those likely to arise in the future. Standardized formatting would make the implementation of VPMs more straightforward, particularly for small businesses who might be reluctant to pay for legal advice on the matter. More broadly, if a global standard was established, then patent marking could eventually be consistently digitized in all jurisdictions, removing some frictions associated with ensuring that the relevant constructive notice is in place across multiple jurisdictions. Lastly, a standard would lower the barriers to the adoption of VPMs by policymakers in VPM-absent jurisdictions. If realized, these factors would result in an increased rate of VPM adoption. A standard would bring greater transparency of IP ownership, lower costs of constructive notice for patentees, higher penalties for infringing on commercialized IP, and more efficient trade between jurisdictions. We aim this article at those patentees and attorneys who wish to ensure the proper implementation of VPMs, and also at governments or inter-governmental organizations who wish to construct a formal standard for VPMs or otherwise encourage their use. The USA has by far the most VPM users and VPM-related case law, and we therefore believe that this jurisdiction’s experience can provide some important lessons for the global intellectual property community. Indeed, the content and wording of the US and UK statutes that explicitly allow VPMs as a form of valid mark are largely the same. The remainder of this article will deal with the purpose and format of these new types of marks, detailing the need for a formal standard before suggesting some essential components of such a standard. It then examines the current state of VPMs by characterizing a sample of active patent marking webpages and estimates the proportion that would not function as VPMs should they be relevant to an infringement case. Finally, it discusses the outlook for VPMs going forward and suggests some prudent policies that governments may implement to encourage their uptake. Virtual patent marks are straightforward in theory: instead of physically marking each product with the associated patent numbers, the marking statute now allows patentees to simply point to a webpage where the patents are listed. The wording of the relevant section of the marking statute in the USA, as modified by the AIA, is as follows: ‘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.’ (35 USC s 287(a)) Observers noted that the addition of virtual marking to the original 2009 bill in the US Senate did not receive a single mention throughout the legislative process.6 This lack of attention now manifests itself through a lack of clarity on how to properly construct a virtual patent mark. Note that while we often refer to VPM pages as webpages throughout this article, a web address, or URL, that points to an equivalent PDF document will suffice under 35 USC section 287(a). VPM as a concept, however, have some clear advantages over traditional marking. Perhaps most obviously, it makes the process of updating patent-product associations very simple and cheap. Before the AIA, manufacturers wishing to mark their products would need to retool their machines or develop new moulds to reflect these updates. can at a In not however, patentees an of marking. In a marking for example, the that the process to reflect in patent would the in of VPMs the need for such while the associated with patent marking and the of a marking are many cases where to existing patent marks may be from the cases of patent or to more a patent that is not may instead be such that it the or the manufacturer simply makes a to patent marks are also in the case of as the use of VPMs that is in the patent number to associated products. This is as damages can be from the time the patent number is consistently on the it time to retool or otherwise the mark to the but in cases where the same products were it also time for these products to the in the VPMs, when they are valid and multiple jurisdictions, also have a significant to selling the same products in these The for example, has also virtual patent marking into their Act a person not be to have been so or to have reasonable for so by of the to a product of the word “patent” or or any word or or that a patent has been for the the number of the patent or a relevant accompanied the word or in This is to a relevant is a to an address of a posting on the is accessible to the public of and the product with the number of the Act This Act to be with the US the VPM a selling the same patented product in both the USA and the UK would have a either patent marks on where the product is or mark both patents on the product or The is the may not be for products by multiple patents in each of many jurisdictions. VPMs allow the mark to be a single to a webpage all patents associated with the product in all jurisdictions. a VPMs as on the product as a single patent mark. any product by multiple therefore, virtual marking is more and may allow patent marking on products that did not have to all relevant patents Lastly, concerning patent marking is often not with how products are but rather to be and on this to VPMs as as they do to traditional marking. example, marking to product a process patent not the product that from the patented However, this of US patent is not and some have this to their in claiming damages on any these not to the way products are be by a patent marking standard and is therefore not of concern Virtual patent marking statutes are clear how a VPM should on the products they mark. 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This section we to be the essential components of any standard for virtual patent marking. 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