What information must be displayed on a virtual marking registry?
USPTO and case law guidelines do not exist about what information must be presented on the virtual marking registry to provide proper notice (See tips on what content to display in your virtual marking registry.). As a rule, patentees should look at existing marking law as the prerequisite guide.
The general practice has been for corporations, at a minimum, to show products by branded name and model number, followed by a listing of applicable patents specific to that product.
Avoid broad buckets. The best practice for your virtual marking registry is to make sure that every model and variation of your product(s) is listed separately.
Why? Because every version of the product’s release may have variations that do not meet the individual claims of each patent – or may not be obvious to the consumer or competitor that they are the same as other products with similar names.
Patentees should avoid using language such as, “One or more of the following U.S. patents may apply to this product.” The purpose of marking is to be specific in patent claims – and there is a general consensus among IP litigators that a lack of specificity may mitigate your ability to prove proper notice was given in the future. (View options for organizing your virtual marking registry.)
The best practice for patent registries is to provide the visitor:
- The product name (branded name under which the product is sold under)
- The model or unique ID(s) (UPC, model # or other specific identification for the product that differentiates it from similar products in your portfolio)
- Text that says, “The following U.S. patents apply to this product:”
- A list of U.S. Patent numbers.
Many patentees who have launched a virtual marking strategy have included other language, such as:
Statute Declaration: Patentees including TiVo (www.tivo.com/patents) include the language “This page is intended to serve as notice under 35 U.S.C. § 287(a).” This declaration of intent to fulfill the new virtual marking law is not required, and it has no known benefit.
Pending: Many companies that have applications filed for relevant patents will include some mention in their registry regarding patents pending. Language such as “Other patents pending” has been frequently used.
UPC Number. For patentees that utilize UPC bar codes on their products, adding a list of applicable UPC numbers will help the consumer and competitor specify which listing is appropriate. The UPC code can vary, based on packaging so a single product may multiple UPC codes associated with it.
Patent Name. Including the actual name of the patent (the USPTO’s recognized “name” of the patent) is certainly an option, though not a requirement. Registries that utilize a database to maintain the content are most likely the registries that offer this additional content.