Ensuring Proper Notice: Clearing the Fog Surrounding Virtual Patent Marking

• Publication year: 2022

54 Creighton L. Rev. 107. ENSURING PROPER NOTICE: CLEARING THE FOG SURROUNDING VIRTUAL PATENT MARKING

ENSURING PROPER NOTICE: CLEARING THE FOG SURROUNDING VIRTUAL PATENT MARKING

Dane D. Sowers ^[D1]

I. INTRODUCTION ................................... 108

II. THE HISTORY OF PATENT MARKING ............ 111

A. Origins of Patent Marking .................... 111

B. The America Invents Act and the Addition of Virtual Marking ............................ 112

III. AMBIGUITIES IN THE VIRTUAL MARKING STATUTE .......................................... 113

A. "Posting" ....................................... 113

B. "Associates" .................................... 115

IV. PRINCIPLES OF DIGITAL NOTICE AND REGISTRATION NOTICE .......................... 117

A. Digital Notice ................................. 117

1. Contract Law................................ 118

2. Real Property - Equitable Servitudes......... 121

B. Registration Notice ........................... 123

1. Trademark.................................. 123

2. Copyright.................................... 125

3. Real Property - Equitable Servitudes......... 128

V. PROPOSING DEFINITIONS FOR THE

STATUTORY TERMS ............................... 130

A. Defining "Posting" ............................. 130

1. Setting the Boundary for "Posting"........... 130

2. Website Transience.......................... 133

B. Defining "Associates" .......................... 139

C. Insertion of Title Requirement ............... 141

VI. CONCLUSION ..................................... 144

I. INTRODUCTION

Consider an everyday product many consumers use with little, if any, thought regarding the packaging: a ketchup packet. ^[1] On the lid of the packet, in small print, Heinz has printed the words "U.S. Pat. Nos. D623,072; other Pats. Pending." ^[2] Use of this language is typically referred to as "marking" a patented product. ^[3] While often overlooked, this marking language serves an important function: if Hunt's Ketchup, for example, infringes on Heinz's patent, Heinz will be able to collect damages without having to prove that Hunt's had actual notice of the alleged infringement. ^[4] However, when the pending patents covering the product are granted, rejected, or abandoned, the marking language on the product will be inaccurate because there are no longer any patents pending. This creates a serious problem for Heinz.

If Heinz were to continue to use the lids as they read today, it could be liable for false marking, which carries a statutory penalty of up to $500 per offense (or in other words, per falsely marked ketchup packet). ^[5] Additionally, for any later-issued patents that were not marked on the product, Heinz would be unable to accrue damages in an infringement action until it provided actual notice to the infringer. ^[6] To avoid these issues, Heinz could redesign its lids to list all of the active patents and no longer include the "patent pending" language. However, this would almost certainly result in the additional cost of creating new lids, and would also not happen immediately; ^[7] presumably, Heinz would want to exhaust its existing inventory of lids before using the new, accurate lids. The doctrine of virtual marking seeks to solve this conundrum.

With virtual marking, instead of marking all of its products with a patent number as it does currently, Heinz could mark the packet with "Pat." followed by a web address, ^[8] for example, "Pat. http:// kraftheinz.com/patents." ^[9] Using this webpage to provide the patent numbers for the ketchup packets would serve two benefits: first, it would allow Heinz to immediately update the page with a new patent number if a pending patent became allowed; and second, it would allow Heinz to quickly remove any expired patents or "patent pending" language so as to avoid liability for false marking. ^[10] Furthermore, use of a virtual marking website would eliminate the potential costs associated with changing the lids, assuming the web address of the page did not change. ^[11]

Despite these seemingly clear benefits, patentees seem reluctant to employ virtual marking in place of traditional marking methods. ^[12] This could be due to lack of education and awareness, either of the availability of virtual marking altogether or of the specific requirements needed to conform with the marking statute. ^[13] Specifically, the marking statute requires that patentees who virtually mark their products include "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." ^[14] There is some ambiguity in this language. Two particular points of ambiguity are the terms "posting" and "associates." Is a "posting" a single webpage or a website with multiple pages? What does it mean to "associate" a patented article with the number of the patent? Patentees may be more willing to mark their products virtually if these questions can be answered, and they can be more certain they are meeting the statutory requirements as aresult. ^[15]

This article proposes interpretations for "posting" and "associates" that are consistent with the text and purpose of the statute, as well as notice requirements in other areas of the law. It also proposes an additional statutory requirement for patentees employing virtual marking. Part II argues that the history of the patent system, and patent marking specifically, should inform the interpretation of the ambiguous statutory terms. Part III outlines the particular issues caused by the ambiguity in the virtual marking requirements; specifically, that it is unclear what the boundary for a "posting" is, the extent to which downtime and modifications are permissible, and what it means to "associate" a product with a patent number. Part IV examines how other areas of the law treat questions of digital notice and registration notice, and develops the common thread that notice is adequate when an observer could be reasonably expected to recognize the existence of a certain fact. Part V proposes that "posting" should be limited to a single webpage, that "associate" should mean to directly connect each patented product with each relevant patent number, and that the title of each patent be included along with the patent number. Part V further urges courts to adopt these interpretations, urges the United States Patent and Trademark Office ("USPTO") to promulgate these interpretations in its guidance, and urges Congress to include the new language in the marking statute when it next revisits the patent system.

II. THE HISTORY OF PATENT MARKING

This Part explains the basic history of the patent system and the patent marking requirements, as well as the background for the introduction of the virtual marking requirements. A clear definition should be consistent with the ultimate goals of the patent system, the marking requirements generally, and virtual marking specifically. ^[16] As a result, this history will illuminate the analysis of how to interpret the ambiguous statutory terms.

A. Origins of Patent Marking

In the early years of the patent system, patentees were not required to mark their products; rather, patents were considered public records and the public was considered to be on notice of all patents. ^[17] However, Congress quickly became aware of the difficulties of such a requirement. ^[18] In the early nineteenth century, someone looking to learn which patents covered a certain product would have to travel by horseback to Washington, D.C., where the patents were stored in "shoebox form." ^[19] This was further complicated by the fact that the singular patent office (and all of the patents) were destroyed in a firein 1836. ^[20] Understandably, Congress sought to introduce another way for the public to take notice of issued patents. ^[21]

The requirement that patented products be marked first originated with the Patent Act of 1842, which required that patentees mark their products with only the dates of their patents. ^[22] Under this Act, there was a statutory penalty of "not less than one hundred dollars" for failing to mark a product that was covered by a patent. ^[23] The Patent Act of 1861 replaced the statutory penalty with the requirement that exists today: that patentees may not recover damages unless the product employing the patent was marked. ^[24] In 1927, Congress altered the requirements so that patentees needed to mark the patent number on the product instead of the date of the patent. ^[25] In 1952, Congress allowed patentees to abbreviate "Patent" to "Pat." on marked products. ^[26] This was the final revision prior to the enactment of the America Invents Act of 2011. ^[27]

At this point in the doctrine's development, the Federal Circuit articulated the three main purposes of the marking requirements: "1) helping to avoid innocent infringement . . . 2) encouraging patentees to give notice to the public that the article is patented . . . and 3) aiding the public to identify whether an article is patented." ^[28]

B. The America Invents Act and the Addition of Virtual Marking

In 2011, Congress passed the America Invents Act, which introduced a number of revisions to the patent system, including the introduction of virtual marking. ^[29]...