Virtual Marking – the AIA Keeps it Simple

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Physical Marking of Patented Product with Patent Number no longer required.

Physical Marking of Patented Product with Patent Number no longer required.

The America Invents Act (AIA) has made the marking of products with an appropriate patent number easier.

Marking a product with a patent number or with “Patent Pending” is generally useful as a deterrent and is suggested under the patent laws (see 35 U.S.C. § 287) so as to ensure a full collection of damages in the case of infringement.  In days past, all products had to be marked with the patent number (with some exceptions).  This didn’t sit well with all patentees, as some products are very small, thus making marking difficult, and other products are designed for aesthetic appeal (ever seen a patent number on an iPhone? Yet Apple has over 1200 patents directed to mobile technologies) and a patent mark would detract from this appeal.

The AIA set out to alleviate these concerns by allowing a patentee to “virtually” (meaning using the internet) mark a product with a patent number.[1]

 

The details of the virtual marking requirements of AIA are as follows:

  • On your patented article:
    • Affix the word ‘patent’ or the abbreviation ‘pat.’; and
    • An internet address
  • Then, on the internet:
    • Provide a webpage that is accessible to the public without charge; and
    • Associate your patented article with the patent number.

Clearly this has advantages besides just aesthetics.

For example, if a single patent covers your product when you begin manufacturing, but another patent issues later, using the website option allows you to update the patent information without having to modify a mold or the product’s packaging. Thus, with this change there is no longer a requirement to mark a product under the former marking scheme if you prefer not to do so (although the old way is still available).  Under the new law, which took effect September 16, 2011, you can choose to:

a) mark your products with “Pat.” (or equivalent) and the patent number,

b) mark your products with “Pat.” (or equivalent) and an internet address that associates the product with the patent number, or

c) use a label on the product or packaging for the product that includes “Pat.” (or equivalent) and the patent number or internet address when it is not possible to mark the product.

Importantly, marking should only occur if the patent actually covers the product.  In order for this condition to be met, the claims of your patent must “read” on the product, i.e., all of the elements of the claim must be found in the product.  (Don’t get confused, it’s not the other way around, not every piece/part of the product need be found in the claims).

Some companies that have implemented landing pages for patent numbers can be found here.

 


[1] The full text of 35 U.S.C. § 287 reads: “(a) 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 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 cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

Small Claims Court – A Way to Defeat Patent Trolls?

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supreme-court-sepia-4_lThe US Patent and Trademark Office is requesting comments on the implementation of a small claims court for patent litigation. These systems have been reportedly used with success in other countries, although in the US the implementation of such a system has not gained traction.  Should this instance be different, and if implemented appropriately, a small claims court could level the playing field for small/mid-sized companies being attacked by Non-Practicing Entities (NPEs or, derogatorily, “patent trolls”) without diminishing the rights of inventors.

Background

The issuance of a patent grants a temporary monopoly to an inventor in exchange for the disclosure of the idea to the public.  While this quid pro quo serves to “promote the progress the sciences and useful arts,” the public is dis-served by the inappropriate application of a patent to a technology (such as when a patent license is included in the cost of a device when it shouldn’t be) and the existence of invalid patents (thus stifling innovation).  NPEs are charged with exacerbating both of these issues by using the threat of (or actual) patent litigation to prey upon companies who may not have the wherewithal, money, or desire to fight a patent infringement lawsuit.  Moreover, NPEs have reportedly devised efficient systems by which to enforce patents against possible infringers thereby further disincentivising a defendant from contesting the validity of the patent.

Possible Benefits of Small Claims Systems

A small claims court for patent litigation could, if properly set-up, level the playing field for infringement defendants, allowing them to cost effectively defend themselves and challenge the validity of patents.  A few of my ideas on this include:

  • Accelerated Claim Construction
    Claim construction (the determination of what the claims of a patent actually mean) occurs during a Markman Hearing, which is generally held relatively early on in the case.  Unfortunately, the Markman Hearing will still happen many months, if not more than a year, after the filing of the lawsuit, but it is not until this hearing is held that the parties are likely to settle.  To accelerate settlement discussions, claim construction in the small claim setting could be part of the pleading and response stage, and a judgement could be rendered based upon an accelerated briefing calendar.  The benefits of this type of system have already be recognized by some courts which have developed “mini-Markman” proceedings that settle the meaning of key terms very early in the process so as to accelerate settlement.
  • Limited Discovery
    Discovery should be extremely limited until the claim terms are determined.  While there are those who indicate that meaningful discovery is necessary to adequately determine the meaning of terms, even going as far as stating the the court needs to be aware of the infringing device and/or process in order to properly perform a claim construction, the better view is that allowing the parties to hem and haw about which terms are at issue and what they mean needlessly allows for gaming of the litigation process to the detriment of the other party and the public.  While there are certain discoverable items that would have an impact on the meaning of claim terms, such as the statements by an inventor, an inventors lab notebook, etc., any discovery should be narrowly limited to very discrete and specific issues (and should not include discovery on the accused device or process).
  • Validity of Patent Determined Directly After Markman
    It is well settled that there can be no infringement if the patent at issue is invalid, yet courts typically allow the infringement and invalidity issues to proceed concurrently.  If both issues are to be settled by a jury, this process makes some sense – yet, at least for some small claims courts, there is no, or a very limited right, to trial by jury.  For patent small claims, juries should be eliminated, which would allow the courts to separate the issues of validity from issues of infringement.  Determining issues of invalidity first will have two beneficial effects – first, it will continue a process in which discovery is likely limited to only a very narrow range of issues and would certainly not include discovery on issues of infringement (sales, versions of apparatuses, notice of patents, etc.), and second, it should accelerate settlement discussions as the parties consider the invalidating prior art in view of the recent claim construction.

While none of these processes would be a complete panacea to the problems posed by NPEs, these procedures could instill a balance between the generally litigation-adept NPEs and small/mid-sized companies looking to defend themselves from suspect claims of patent infringement.

Photo credit: IslesPunkFan / Foter / CC BY-NC

Claiming Biodegradablility or Compostability – Patents, Labeling, and the FTC

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As reported here earlier this week, the Federal Trade Commission (FTC) has revised its Green Guides, guidance to marketers for the use of certain terms so as to prevent deception in the marketplace. While many topics covered in the Green Guides are potential issues for manufacturers and retailers and how they market their products, one of the more interesting changes to the Guides are the revised definitions of “degradable” and “compostable” and how they will apply to an emerging plastics market that is producing more packaging and products that degrade over time and how these definitions may be used in patent claims.

As noted in Alexander H. Tullo’s article, Old Plastics, Fresh Dirt (Chemical & Engineering News, March 19, 2012), “[i]n the plastics industry, terms like ‘biodegradable’ and ‘compostable’ are thrown around loosely” because, as a completely theoretical exercise, if you wait long enough everything will biodegrade.  In an attempt to reign in the use of these terms, the plastics industry uses specifications published by the ASTM, and specifically for biodegradation, ASTM D6400.  However, in order to comply with the new FTC Guides, the use of these terms when selling products or packaging needs to be limited or appropriately qualified so as not to be deceptive.  For example, qualification is generally necessary for a statement of degradability unless it has “competent and reliable scientific evidence that the entire item will completely break down and return to nature (i.e., decompose into elements found in nature) within a reasonably short period of time after customary disposal.” Sec. 260.8.

Similarly, in order for a material to be marketed as compostable, the marketer should possess competent and reliable scientific evidence showing that “all the materials in the product or package will break down into, or otherwise become a part of, usable compost (e.g., soil-conditioning material, mulch) in a safe and timely manner in an appropriate composting program or facility, or in a home compost pile or device.”  In this case “timely manner” means “in approximately the same time as the materials with which it is composted.”

Clearly, plastics manufacturers and retailers will want to comport their current marketing practices with the guidance put forth by the FTC.  In many cases, this means putting accurate and complete qualifications regarding the limitations on degradability and compostability associated with the product and/or packaging.  For example, a biodegradable plastic fork may not be entitled to an unqualified claim of biodegradability if the likely place the fork will end up is a landfill, where the fork is unlikely to degrade.  A possible qualification for the fork could be: This product will biodegrade in a commercial composting facility, which may or may not be available in your area.

Interestingly, however, these new definitions may provide an additional avenue for claiming materials in patents that meet the unqualified definitions under the Guides.  For example, there are several patents related to biodegradable copolyesters having certain compositions and methods of producing them.  However, I could envision another way of patenting the material that would incorporate the definition proposed in the Guides, e.g., biodegradable polysters could be implicitly included as a material that is used to produce a container that is designed so that it meets the definition of biodegradability without qualification (maybe the packaging has a structure that allows it to come apart easily or separate upon compression so as to expose a larger surface area to necessary elements that quicken degradation).  In this example, while your patent would be limited by the container structure, it wouldn’t necessarily be limited by the type of biodegradable polyster that was used to make the container.

As I’ve written before, regulations and rules can provide opportunities for new innovations; possibly the Green Guides have opened yet another doorway.