Should virtual marking sites require registration?
Many organizations considering a virtual patent marking strategy are looking at how to track what competitors are searching for on their virtual marking site. Section 16 of the America Invents Act does not provide any specific requirements preventing a registration stating “…accessible to the public without charge for accessing the address…”
Why require registration on a virtual marking registry?
There are numerous reasons a company might want to require registration:
- From a competitive intelligence perspective, knowing who is looking at your patent registry and what they are searching for may be very insightful.
- From a legal perspective, tracking what a competitor searched for and viewed that results in infringement would assist in proving “willfulness” and thereby increase potential damages.
Why requiring registration is a flawed choice
- Fake Accounts. It is very easy to “game” the system to provide false registration information. Free Internet services enable competitors who want to create a fake identity and temporary email address can do so in minutes.
- Prohibitive. The intent of virtual marking was to make it simple and easy for the public to clearly identify which patents apply to products. The idea of registration does not support the philosophy or intent of the law to provide a quick access. Any registration process that makes it a requirement to have an email address, for example, to access the site might be considered prohibitive to the courts.
- Future Case Law.It is inevitable that there will be a company who goes to the extreme of making registration prohibitive and even outright in conflict with the law. If future Case Law defines that registration is in conflict with the law, there is some risk for any other company using registration to have missed their full rights in future litigation where marking issues and constructive notice issues arise.
We recommend to companies to avoid registration on their registry. Instead, we instruct them to take alternative approaches to tracking and managing who is searching their registry that provides some level of competitive and legal intelligence.