How to Mark Your Patented Product. Episode 71

Returning to Patents

We are back to discussing patents after a few episodes on trademarks. Before we dive in, I want to give a thank you to Feedspot for ranking my podcast #4 among invention-related podcasts. Invention Stories, Inventors Launchpad, and The Invention Podcast, watch out—I’m coming for you! Just kidding, those are great podcasts, and I actually listen to them myself. We all cover different aspects of inventions. My podcast primarily focuses on how to get a patent, but there are many other aspects of bringing an invention to market. It's a good idea to learn from experts in all areas related to your invention.

My strength is knowing what I’m good at and what I’m not. I am not a product marketer, an investor, or a manufacturer. If someone tells you they can do everything—patents, marketing, manufacturing, and investment—you should probably run the other way. No one is an expert in all these areas. My primary expertise is getting you a patent, and I can direct you to professionals in other fields related to your invention.

Patent Marking: Why It Matters

In this episode, I will cover one of the simpler aspects of patents: marking your product. Once you have a patent, you want to mark your product so that others know it is patented, which helps deter potential infringers.

One major reason to mark your product as patented is that it allows you to sue for damages from the moment the infringer had notice of your patent. If your product is marked, that notice starts on the day it was marked. This is called constructive notice. Even if someone never actually saw your product, constructive notice means that the public was generally aware of the patent, and that is sufficient for legal purposes. However, if your product was not marked, then you must rely on actual notice, which typically starts when you send a cease-and-desist letter. To maximize your ability to claim damages, you should mark your product as soon as possible to establish the earliest constructive notice date.

How to Properly Mark Your Product

Ideally, you should mark the product itself with the word "Patented" or "Pat." followed by the patent number. For example:

Patented – U.S. Patent No. 12345668

If marking the product itself is not practical—perhaps because it is too small, like a grain of rice—you can place the marking on the product's packaging instead.

Using a Website for Patent Marking

Another method is to use a website instead of listing the patent number directly on the product. You can write "Patented" on the product or packaging and provide a URL that directs people to a webpage listing the relevant patents. The website must be free and publicly available.

This method is particularly useful when your product is covered by multiple patents. For example, if you created a new type of computer system with 100 patents covering different components, listing every patent number on the product or packaging would be cumbersome. Instead, you can simply list a URL where users can find the complete patent list. A significant advantage of this approach is that you can easily update the website when new patents are issued, avoiding the need to repackage your product just to update the patent numbers.

What If Your Patent Is Still Pending?

If your patent is still pending, you can mark your product with "Patent Pending." Generally, you should not list the application number. There are two reasons for this:

1. Patent applications are not published until 18 months after filing, so even if you list the application number, people won’t be able to look it up immediately.

2. You don’t know if your patent will be granted. If someone looks up your application and sees it has been rejected or identifies weaknesses in your claims, they might design around it.

   
   

It is better to simply state "Patent Pending," which keeps competitors uncertain about what aspects of your product might be protected. This is known as chilling the competition. While you cannot sue someone for infringing a pending patent, the presence of a "Patent Pending" label may deter some potential infringers.

Can You Claim Damages Before Your Patent Issues?

A common misconception is that you cannot get any damages before a patent issues. While it is true that you cannot sue until your patent is granted, you may be able to claim damages for infringement that occurred while the patent was still pending.

According to U.S. Code Title 35, Section 154, if your patent application was published and the claims in the application are substantially identical to the claims that were ultimately issued, AND you provided actual notice to the infringer (such as by sending a cease-and-desist letter), you may be able to collect damages from the date of that notice.

However, simply marking your product "Patent Pending" is not enough to establish notice for damages. You must notify the infringer directly.

If your patent is already issued and you marked your product with the patent number, you do not need to provide actual notice—just having the patent number on the product is sufficient for claiming damages from the issue date.

Avoid False Patent Marking

Never mark your product as "Patent Pending" unless you have actually filed a patent application. Falsely marking a product can result in a lawsuit, with fines of up to $500 per falsely marked product.

In the past, anyone could sue a company that falsely marked a product, and some individuals made a business out of finding products that still listed expired patents and suing the companies. However, under current law, only the U.S. government or competitors who have suffered actual harm can file a lawsuit for false marking.

Where to Find More Information

If you want to read the full details on patent marking laws, you can find them in U.S. Code Title 35, Section 287. The laws on false marking are found in Title 35, Section 292.

Conclusion

If your product is patented, mark it with the patent number on the product or packaging, or list a website where people can find the relevant patent information. If your patent is still pending, mark it as "Patent Pending" to deter competitors, but do not list the application number. While marking your product "Patent Pending" does not grant additional legal rights, it can still serve as a warning to potential infringers.

Most importantly, do not falsely mark your product as patented or pending unless it truly is—violating this rule can lead to significant legal consequences.

I’m Adam Diament, and until next time, keep on inventing!