Marking Patented Websites

How should patented websites be marked in order to comply with the patent marking statute? Do all website patents invoke the statute? What happens if a website is not marked at all? The answers to these questions are far from trivial, and millions of dollars in damages are often at issue.

Under the statute, 35 USC § 287, a failure to mark will bar a patentee from recovering damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice. And then only damages that accrue after such notice are available. Thus, while marking is not required, the amount of available damages can be severely reduced without marking. Specifically, the statute reads:

Limitation on damages; marking and notice. Patentees, and persons making or selling any patented article for or under them, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

Marking a Method
Many websites are claimed in terms of the "methods" performed on web servers for generating the websites, but the statute clearly only applies to a "patented article." Accordingly, courts have agreed that patents with only method claims are not subject to the marking statute. In such cases, damages would start accumulating from the issue date of the patent, irrespective of whether marking occurred.

Many website patents, however, also include "apparatus" or "system." Unfortunately, the courts have been inconsistent in their application of the marking statute when a combination of claim types is present. This is true even when only the method claims are being asserted. Thus, although some courts would consider it relevant that only method claims are being asserted, it is particularly advisable to mark websites covered by patents that include non-method claims.

How to Mark a Website
One approach to website marking is to list at the bottom of the home page or legal information page the patent numbers that apply to the website, along with the required "patent" or "pat." label. This approach could also include making the numbers themselves hyperlinks to those particular patents in the PTO patent database. The HTML code for a hyperlink that would display "Patent 6,000,000" and link to the Patent Office website for Patent No. 6,000,000 is:

Patent 6,000,000

To use such a hyperlink for a different patent number, a web page designer would replace each instance of "6000000" and "Patent 6,000,000" with the different patent number.

Also, although claiming the web page itself--in the form of a recordable medium article of manufacture--is normally advisable (see previous issue of Patent Strategy & Management), such a claim comes close to being the "patented article" mentioned in the marking statute. Therefore, if such a claim is included in a patent, it is extremely important to properly mark the web page.

Is marking the home page or legal information page enough? While courts have not addressed this precise issue, some might argue that such marking is similar to attaching a label to the packaging of a patented article, which is only permissible when the "character of the article" prevents the notice from being fixed "thereon." Since such a strict interpretation might suggest inscribing patent numbers upon a web server itself-which would never provide actual notice to the public--courts are unlikely to follow such an interpretation. Instead, courts might analogize to the doctrine of substantial compliance, by which courts have not required absolute compliance but only that "substantially all" articles be marked. Thus, one should consider marking substantially all web pages related to a patented invention.

Conclusion Since the purpose of the patent marking statute is to provide notice to the public, a failure to mark at least the home page of a website will be difficult for a patentee to explain away. There may even be an obligation to mark substantially all web pages related to the patented technology. However, since courts have allowed patentees to cure failures to mark as long as the marking begins before infringement commences, a "better late than never" approach is appropriate.