Josh: [00:00:00]  Good day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It's for inventors, founders, and IP professionals alike, established or aspiring. And boy, are we glad to be back.

Apologies for the brief, unannounced summer break, but we ended up partnering with Thomson Reuters on a massive deep dive into how AI is impacting the industry. This is on top of working diligently on the upcoming complete redesign of our website. So our content development bandwidth ultimately took a hit and the podcast paid the price.

But we're back in action now and are planning on extending our podcast calendar into December when we typically take a break to make up for slacking on the microphone this summer. And for our return in this month's episode, we're talking about patent marking and its massive implications on your ability to collect on infringement damages.

We've all seen patent numbers on physical products. Much like they're copyright and trademark cousins. These designations are [00:01:00] far from cosmetic and instead serve a statutory requirement to provide public notice about your protected intellectual property. In the case of patent marking, not only does it reduce the risk of infringement because you're informing potential in refrigerators of the patent's existence, but the notice also marks the point in time from which you can go back to for collecting un awarded damages is the panel we'll discuss today.

American Petant Law operates on a simple principle. Mark your products with patent numbers or watch your damages disappear. Kristen Hansen, patent strategy specialist at Aurora leads today's discussion with our all-star patent panel, delving deeply into the do's and don'ts for patent marking both physical and virtual for us and abroad.

Along the way, Kristen and the panel discuss patent marking basics, legal requirements for patented marking benefits, and best practices for marking a real life case, cautionary tale. And implications for worldwide marketing. Kristen is joined today by our always exceptional group of IP experts, including Dr.
Ashley Sloate, president and Director of [00:02:00] Patent Strategy at Aurora. Dr. David Jackal, president of Jackal Consulting, Dr. Tiffany Miller, patent strategist at Aurora Albert Dew, patent strategist at Aurora. And Marie Smith, patent agent at Break Hughes Erman, LLP. And before jumping into the panel, we'd like to take you to the next installment of the Mossoff Minute.

A monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references. This Mossoff Minute was recorded earlier this summer, but the timing of its release couldn't be more perfect.

With incoming director John Squires receiving Senate confirmation last week and said to take the reins at the U-S-P-T-O, we'd love to celebrate the accomplishments of acting director Koch Morgan Stewart. Her tireless efforts over the past months are helping to light the path back toward reliable and effective patent rights for innovators across the country and in the global economy.

Professor Adam Mossoff:Lots of really important developments are occurring at the patent office [00:03:00] under Acting Director Koch Morgan Stewart. I'm speaking specifically of the Patent Trial and Appeal Board, the ptab. This has been referred to as the Death Squad for patents with an 80% or more cancellation rate. Very loose standards for accepting and adjudicating the petitions that have been filed to cancel patents at the patent office.

Since its creation. Koch Morgan Steward has, is finally bringing to bear some reform. She has reinstated what are referred to as the tive. Factors for denying petitions, and she's developing now for the first time, as should have been developed years ago, case law for how petitions should be denied. It's clearly intended by Congress, given that it authorizes the director of the U-S-P-T-O to deny petitions with zero guidance on what to do.

In terms of de denying petitions, she's developing this case law, for instance, invoking long standing standards in the [00:04:00] law, like settled expectations. A standard actually applied by the US Supreme Court in 2002 in a very important patent decision known as feto. So very deeply rooted and understandable standards that all lawyers accept and recognize in all areas of patent law, including in other areas of the legal system more generally.

And this is significant because if the PTA is to exist in any legitimate way, it really needs to have these types of procedural and substantive guardrails imposed that both protect the rights of patent owners and define with greater precision. The exact scope and application of petitions to cancel patents at the PT A.

Um, and hopefully Congress will ultimately enact prevail legislation which will bake into the ptab actually very explicit guardrails like we are seeing Koch Morgan Stewart develop because we cannot continue to have vacillating back and forth [00:05:00] standards at the p ttab with each new administration, with each new director.

Innovators require reliable and effective patent rights because they are investing over the long term. They deploy their innovation in the marketplace over the long term. And so we can't have changing rules at the patent office every four years. Prevail needs to be adopted. And Koch Morgan Stewart is showing us.

Some of the important ways that if prevail is enacted, how this will actually bring stability and reliability back to the patent system for innovators across the country and in the global economy. So stay tuned. Hopefully we'll see a good result out of all of this.

Josh:  Thanks, Adam. We're also publishing clips for the Mossoff Minute, a short form videos on Instagram reels, YouTube shorts, and TikTok.
You can check out these shorts and follow us at Aurora patents on all three platforms. And now without further ado. Take it away, Kristen.

Kristen: So we're covering patent marking today, and as a quick overview, I'll give you an intro to patent marking. I'll give you some legal requirements [00:06:00] of it, some benefits and best practices, uh, a real life case, cautionary tale, and some worldwide marking, um, just notices and what, what they do around the world for marking.
So.

A definition first, patent marking actually refers to the practice of labeling a product with its patent number so that you can inform the public of its protected status. It reinforces the legal right of the patent holder, and it serves as the public notice mechanism with respect to some IP protections according to us patent law.

And some of that notice has to do with if you get sued or somebody's infringing and you're suing them, you get damages awarded. And damages can be decided based on this timing of notice. And so a marking can actually give a notice. So the actual statute is 35 USC 2 87 A, where they actually just say that.

Uh, we [00:07:00] operate in America on a simple principle. Mark your products and patent numbers or watch your damages disappear because if you don't give this kind of a notice or you don't give some other sort of notice, your damages are calculated from the time you basically put the suit onto somebody. Um, so this is because you can't really be awarded damages before an actual notice date.

And the notice date can, in this case, be a marking of these products. So really, the statute tells patent owners, patent owners really no marking no money, you know, except for damages occurring after you've actually
told an infringer to stop infringing.
Okay?
So US patent law actually
requires patent holders to mark their patent products with a corresponding patent number. This actually functions as the public notice and damage recovery in almost all infringement lawsuits where you are actually having to calculate damages, though articles can be marked patent pending once a US patent application [00:08:00] covering the article is filed.

And this does include provisional patent applications. However, patent pending doesn't get you any kind of damages. Timing line in the sand patent pending is just something where you can actually put somebody in the know that this is coming or you can actually let them know, Hey, don't infringe, because we're likely getting a patent soon.

But nothing is calculated from patent pending. But once granted, any subsequently produced articles have to be marked in compliance with the patent marking statute. Um, and, and marking can be physical and
virtual and, and we'll go into that.

Okay, so physically mark, or virtually Mark
in 2011 that Lahey Smith's a i a act that everyone hears about over the last decade, um, actually put into, uh, practice this virtual marking possibility instead of physically [00:09:00] marking. And they said, you know, if you're gonna physically mark, you have to do it a certain way.
If you're going to virtually Mark, you have to do it a certain way and you can pick between. But here, it, it basically gave inventors a little easier way to mark if they were going to virtually Mark. But some of the rules are like, you know, if you're gonna mark a product, I'm sorry, if you can't mark a product because the size constraints, right?

You may, maybe a small widget, you can instead mark the packaging or a label. And if the, the, all the other caveat to that for physically marking if the words are printed on a product of any kind of words. So the product is big enough to have words on it. The patent number or the web address to some virtual marking also needs to be included on the product.

And those are kind of the physical marking guidelines. But even if it's big enough to have words printed on the product, you can choose to do this virtual marking instead. Um, I would say don't do a combination of both. If you [00:10:00] can help it, it's just cheaper to do the virtual marking these days. But if you choose to physically mark in a certain way, you have to follow the guidelines and you have to keep things updated.

So virtual marketing really allows a company to update its products without having to relabel or reproduce. Um, especially when new patents issue covering parts of the products, it's really difficult to say, do a new mold or a new imprint or a new etching. For a particular part, right? You don't wanna pull your inventory and re etch because you got a new patent.
It's just so much easier if you're only if, if you're going beyond a single patent or two that
are already marked to just virtually mark.

Okay, so physical patent marking basics. So really marking
is accomplished by marking the patent product with the word patent or PAT period, followed by the actual patent number or followed by the web address if you're going to do virtual, virtual marking in combination with physical notice. [00:11:00] Um, and really there's something.

Really called constructive notice versus actual notice. And constructive notice really means that a person is considered to have been informed of something, even if they didn't receive a direct or actual notification. So marking is a way of providing constructive notice. And actual notice would actually be like sending a cease and desist letter or, um, sending some communication that says, Hey, we have this patented content.

You may be infringing. Or, or even just saying, Hey, we have this patented content. So tho both of those things can be noticed and they can be used to calculate damages later down the line. Any questions on what I've presented so far?