There are a number of reasons for marking your product: (1) fulfilling of patent marking statutory requirements in order to collect damages in the event of infringement, (2) mitigating the risk of others copying your proprietary products.  Strategies for achieving these objectives may be one and the same but not necessarily.  So to the extent you can use strategies for #1 to achieve #2, you can certainly do so.

You can of course use your company’s registered logo using the ® on all products. As to unregister marks you can of course use them along with the designation of ™   … There is no reason why these cannot be used in combination.

1. INFRINGEMENT

You can use the word “patent” or abbreviation “pat.” on the product followed by an internet address at which the patented article is associated to one or more patent numbers (as well as published patent application numbers).

Why: Under 35 U.S.C. § 287, a patent owner can collect damages for an infringing product only if adequate notice is given of the patent(s) at issue.  The patent act provides two ways of providing notice: actual and constructive.  Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent.  Constructive notice is achieved by affixing a product with, for example, the word “patent” or abbreviation “pat.” along with the patent number. The AIA permits a patentee to put the public on constructive notice via “virtual marking.”  This “virtual marking” is satisfied by the word “patent” or abbreviation “pat.” on the product followed by an internet address at which the patented article is associated to one or more patent numbers.

List all patents: Every valid patent that applies to the product must be listed in any physical or virtual marking.  If an applicable patent is not included, damages resulting from the infringement of that patent are not available until actual notice is established.

A component of the patented product: Marking one component of a multi-part patented product is sufficient when the components are packaged together.  If your product is sold separately, the best practice is to mark it as “for use” pursuant to the patent number(s).  If your component is separately patented, it should be marked and the assembled product should also be marked.

Software product: Where there is a “tangible item” embodying the software, it must be marked to comply with the marking statute.  Simply providing notice at the start-up screen is likely insufficient.  Stated simply, if there is a way the product can be marked, it should be marked.  If there is a website that embodies the software, or that provides access to a program or downloadable software covered by the patent, the website should be marked.  However, if the patent contains only method claims, there is no requirement to mark.

There is no marking requirement for patents that contain only method claims as there is no physical product that can be marked.  But if a patent owner wants to give notice of method patent claims, products may be marked with “Made under US Pat. 7,000,000” or “For Use under US Pat. 7,000,000” on the website while using the same notation as mentioned above on the product. If the patent contains only product claims or has both method and product claims, the product should be marked.  Marking is also required for design patents to obtain the full scope of remedies available for infringement.

 “Patent Pending”: The purpose is to warn copyists that a patent covering the product may issue.  But the patent statute does not provide any advantage to using “Patent Pending” or penalty for not using “Patent Pending.”  Using “Patent Pending” does not entitle one to damages prior to issuance of a patent; nor does it provide any basis for objecting to copying. However, there are some advantages for when the patent does issue.  All and all, not disadvantage.

Somethings are not all spelled out in the statute as to how best to do things … so as to use of word “pending” (if you want to avoid having to re-do the molds or packaging, etc.), you may use “patent/patent pending” followed by the internet address and then making sure all the required information is provided on the website, in a non-misleading manner, as mentioned above.

Web page: Create a dedicated web-page for all your legal notices (patent, trademark, etc.). Keep a record of your webpage as you update it from time to time.

Notice: To be considered sufficient under U.S. law for the purposes of constructive notice, the word “Patent” or the abbreviation “Pat.” together with the number of the patent (or constructive notice via marking with web page) must be indicated. The marking requirement is not satisfied by simply marking the product with the words “Patent Pending” or words of similar effect. The marking should also be large enough to be legible.

False marking: Marking a product to indicate that it is covered by a patent is often used to convey a message of technological superiority and to put would-be competitors on notice that a patent covers the product. As a result, it may be tempting to use some form of patent marking on a product simply as a part of a marketing message without actually having the underlying patent rights associated with that product.

Intentional false markings can have legal and financial consequences. Specifically, U.S. law prohibits three types of false marking:

  • counterfeit marking (i.e., the use of a patent mark without the patent owner’s permission);
  • false patent marking (i.e., the use of a patent mark on an unpatented product with intent to deceive the public); and
  • false patent pending marking (i.e., use of the terms “patent applied for” or “patent pending” when no patent application directed to the product was filed).

2) COPYING:

Identify: your molds by etching or engraving (if copying in a non-English speaking location is of concern, perhaps also identify in the other language) the fact that the mold is your property and, if possible, do this both where it is obvious (to deter others) and where it is well hidden (to deter those who might try to remove your markings). Place an intentional distinguishing mark on the underside of all your products.

If you are going to use patent marking, then just be sure to follow the requirement stated above to achieve both purposes. If not all parts are protected by patents, then adding your mark will help achieve the second objective.

Smart labeling for traceability: There are now solutions for generating barcodes that can’t be copied. For example, a company called Scantrust gives its customers a software that detects whether their QR codes are genuine or were copied.

Altering: You can add an unpredictable but benign substance (something that is not necessary) in the formulation of the material for making your products. Since there is no reason for including this substance if someone makes a product (which is based on your molds, etc.) without it means it was probably made by an unauthorized manufacturer. A simple chemical test is sufficient to prove this.