Why are you not patent marking?  Is it really worth the trouble? 

There is a concept in the patent and the IP world which has been available for use for approximately a decade now and should be well known and used: Virtual Patent Marking (VPM) programmes

In essence, VPM programmes provide early ‘constructive notice’ to the public, by providing a publicly accessible <url> address to a list of patents that are each associated with product(s). As we explain below, the earlier the constructive notice date, the greater the value VPM provides to the listed patents.

Firstly, the good news, the US and the UK are the two countries which have signed on to the concept of VPM which means that UK patent owners have a tremendous and potentially commercially valuable opportunity, particularly if the US is one of their overseas markets.  However, in reality, we find VPM seems to be both largely unknown and rarely used by patent owning entities (Owners), even though such marking should be extremely valuable in sectors such as tech and pharma, among others. If VPM is not ubiquitous, why not? 

A bit of background first: Before 2011, the US (35 U.S.C. §287 to be specific) defined the statutory requirements for the physical marking of patented products to provide effective legal notice.  This meant marking the word ‘patent’ or ‘pat.’ along with the specific patent number(s) directly on the product, on a data plate/label on the product, or on its packaging. Doing so provided constructive notice to potential infringers as of the date the patent notice appeared on the product. (Constructive notice in essence means that, by notifying the public of a patent and the product associated with it, a potential infringer can be considered to be on notice without requiring the Owner to send a formal notice letter.)

However, the Owner was also required to make documentation changes associated with the product, keep the marking current, and to update the marking should there be any change in the status of the patent, for instance when the patent expired or was allowed to become abandoned. Such marking also was often found in the plastic molds and metal stamping dies, requiring additional management and maintenance attention of the many small characters in the patent notice, repeatedly, as patents issued and expired.

Pre-VPM marking also came with certain risks of being accused of false marking if the patent (or patents) identified were no longer in force. Before 2011, getting marking wrong meant Owners were exposed to relatively strict liability and potentially significant financial penalties for ‘mismarking’. 

Addressing these issues, VPM became available in the US as of 2011 and in the UK in 2014.

In essence, VPM programmes are capable of providing efficient and effective ‘constructive notice’ to the public. The VPM rules merely require providing a publicly accessible <url> or website address (such as, www.companyname.com/patents) with a listing of patents that are associated with product(s) covered by the corresponding patent(s). Updating the list is a far easier process without needing to coordinate a massive updating of product labels and separately managing each specific patent identified on, and associated with, each corresponding product.

However, the requirements for VPM also require care to ensure that the VPM list is, in fact, up to date and is freely accessible to the public without cost or other requirements.  A VPM programme must also be demonstrated to be resilient and substantially continuous, meaning that the <url> is not prone to service interruptions and the like. 

Even with these requirements, the value of VPM to an Owner is compelling. Typically, if an Owner notifies a potential infringer of a patent, the date of the actual notification becomes the date starting a period of time in which Damages may be assessed, if infringement is found by a court to have occurred. But VPM can maximise the extent of the applicable Damages period thus potentially significantly increasing Damages associated with the infringement in an ordinary patent infringement case. But this is even more significant in a US ‘willful’ infringement case, where statute allows the base Damages to be multiplied by the court up to three-times, under the appropriately offensive infringement circumstances. 

In the United States, an Owner would be entitled to Damages for up to a 6-year period predating the date of filing a complaint, and back to the date of the actual the notice. However, there may be instances in which there may be a considerably longer period of time, up to the 6-year period in which Damages could be assessed back to the date when an insightful Owner with audit-ready records established a substantially continuous VPM programme and an important patent being listed as of the date of grant of the patent, as the ‘constructive notice’ date for the patent. Consider that this insightful Owner later discovers that a potential infringer has been operating unnoticed for ten years from the date of grant of the patent. In this case, the Owner could be entitled to the 6 years of Damages back to the ‘constructive notice’ date. Patent infringement Damages awards can now approach many tens-of-millions of pounds and can be greatly influenced by the period over which an infringing activity occurred.

Consider the same example without the ability to claim the much earlier ‘constructive notice’ date. Under the same conditions, the Owner would be left with a potentially significantly, and proportionally diminished Damage award, completely losing some of the ‘pre-notice’ infringing activity. Thus, the earlier, now lost, period could have yielded considerable value (or lost revenue).

Owners may be entitled to compensation (‘provisional damages’) back to the date of publication of a preceding patent application in cases where the ‘claims’ in the application are substantially similar in scope to the claims in the corresponding granted patent, though this compensation may be a considerably lower quantum, compared with pre-notice Damages provided by VPM.

All of this may prompt the question: Does VPM only bring value in litigation? The answer is No! Our insightful Owner can leverage their active VPM programme to enhance the value of the IP rights vested in a patent portfolio, to create incentive for a prospective licensee to see the value in a higher licensing rate, where a robust and auditable VPM backed patent portfolio would give the Owner considerably higher leverage in the patent licensing market. This could also provide arguments and the basis for increased value in a patent portfolio in the context of a business acquisition, or the acquisition of all or a portion of the patent portfolio. 

Thus, the sheer magnitude of the value of VPM should be enough to prompt action, enabling Owners, who might act as a marketer and tech transfer agent in one instance to become an effective IP rights enforcer/trader in another. VPM SaaS tools aren’t common, but Markr may be one solution. With Markr, Owners can build the portfolio of patents and pending applications, efficiently ‘linking’ each patent and pending application with associated product(s). Once complete, Owners seamlessly download a fully populated VPM Notice page including caveats, for posting to a VPM <url> on their website. Owners complete the VPM requirements by adding the VPM <url> to product(s) and packaging as in the past. But the management and scheduled updating of the VPM Notice Page to reflect changes in their patent portfolio and associated products can occur smoothly and efficiently. 

This article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your patent professional on any specific questions you may have.