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What Changes Were Made to the U.S. Statute by the AIA for Virtual Marking?

James Burnes

Article written by:

James Burnes

PatentStatus - Founder & CEO

The H.R.1249 — Leahy-Smith America Invents Act enrolled bill was enacted by President Obama on September 16, 2011 (view photos and video of the ceremony). You can read the entirety of the final legislation approved by both the House and the Senate here.

We have excerpted the key content regarding virtual marking below from “Section 16. Marking:”

(a) VIRTUAL MARKING.—

(1) IN GENERAL.—Section 287(a) of title 35, United States
Code, is amended by striking ‘‘or when,’’ and inserting ‘‘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, that associates the patented article with the number of the patent, or when,’’.
(2) EFFECTIVE DATE.—The amendment made by this sub- section shall apply to any case that is pending on, or commenced on or after, the date of the enactment of this Act.
(3) REPORT.—Not later than the date that is 3 years after the date of the enactment of this Act, the Director shall submit a report to Congress that provides—
(A) an analysis of the effectiveness of ‘‘virtual marking’’, as provided in the amendment made by para- graph (1) of this subsection, as an alternative to the phys- ical marking of articles;
(B) an analysis of whether such virtual marking has limited or improved the ability of the general public to access information about patents;
H. R. 1249—46
(C) an analysis of the legal issues, if any, that arise from such virtual marking; and
(D) an analysis of the deficiencies, if any, of such virtual marking.
(b) FALSE MARKING.— (1) CIVIL PENALTY.—Section 292(a) of title 35, United
States, Code, is amended by adding at the end the following: ‘‘Only the United States may sue for the penalty authorized by this subsection.’’.
(2) CIVIL ACTION FOR DAMAGES.—Subsection (b) of section 292 of title 35, United States Code, is amended to read as follows: ‘‘(b) A person who has suffered a competitive injury as a result
of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.’’.
(3) EXPIRED PATENTS.—Section 292 of title 35, United States Code, is amended by adding at the end the following: ‘‘(c) The marking of a product, in a manner described in sub-
section (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.’’.
(4) EFFECTIVE DATE.—The amendments made by this sub- section shall apply to all cases, without exception, that are pending on, or commenced on or after, the date of the enactment of this Act.

The real issue that will result from virtual marks for patent holders will be the analysis of the effectiveness of virtually marked goods and materials in three years by the USPTO.