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Business Law Today

September 2023

The Value of Virtual Patent Marking

James E Gastle and Grant Henry Peters


  • Virtual patent marking (“VPM”) can help navigate the complexities of managing patent portfolios, maximize economic and enforcement advantages, and unlock monetization opportunities. 
  • VPM-supported infringement damages can be assessed for up to six years starting from when a VPM web address appeared on the article along with the patent and associated article on a web-based VPM list.
  • Amendments to the U.S. VPM statutes also virtually eliminated risk of “false marking” when managing a good-faith VPM program and inadvertently leaving expired patent information on a product.
  • Beyond U.S. litigation, VPM can provide leverage for higher valuations based on earlier constructive notice dates.
The Value of Virtual Patent Marking

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Virtual patent marking (“VPM”) is a powerful tool with immense potential to enhance the value of patent portfolios covering products. General counsel and attorneys representing U.S. patent owners and licensees need to understand the compelling value of VPM to maximize economic and enforcement advantages and unlock monetization opportunities.

The U.S. introduced VPM in 2011, when it amended 35 U.S.C. §287. Prior to this change, “traditional marking” required listing every relevant patent on the associated article. The VPM statute enables patent owners to post a single list of numerous patents (“VPM list”) on the Internet, associating the patents with articles sold, offered for sale, or imported into the United States. Marking an Internet web address (“VPM-URL”) on patented articles allows the public to navigate to a VPM page hosting the VPM list. The VPM page gives the public legal “constructive notice” of the patents on the VPM list and easy access to understand which patents are associated with particular articles. Updating the VPM list is straightforward, eliminating numerous changes needed to molds, stamping tools, and product labels required with traditional marking. A VPM program streamlines the marking process while providing a convenient platform for patent information.

VPM programs mitigate the risks associated with false marking claims, when expired patents inadvertently linger on physical products. Revisions in 2011 to 35 U.S.C. §292 remove risk that was formerly associated with inadvertently leaving an expired patent on a product. The statute now requires that the alleged false marking was done with an “intent to deceive the public” and that a plaintiff suffer competitive injury as a result.

The VPM list should not have any barriers to access and should be kept up to date. The VPM-URL must be substantially on all associated products and continuously used to support constructive notice. Despite these requirements, the undeniable value and benefits of VPM programs make the effort worthwhile.

Typically, in a patent infringement case, a U.S. patent owner sends a letter to an accused infringer, providing “actual notice.” The date of sending this letter starts a period during which damages may be assessed after a determination of infringement. The U.S. patent owner is entitled to damages for the period from actual notice until infringement stops. Importantly, however, the period can be as little as a few days or months from the actual notice date.

In sharp contrast, using VPM, damages can be assessed for up to six years starting from the date when the VPM-URL appeared on the article and the patent and associated article first appear on the VPM list: the constructive notice date. With U.S. patent infringement damages awards approaching many tens of millions of dollars or more, the monetary value can be greatly influenced by the longest period established by the earliest constructive notice date.

Beyond U.S. litigation, in the context of business acquisitions or the acquisition of a VPM-listed patent portfolio, VPM can provide leverage for higher valuations based on earlier constructive notice dates. This is because, as discussed above, the date of constructive notice holds substantial weight in assessing the enforcement value of a U.S. patent. Thus, incorporating robust and auditable VPM programs into patent strategies presents a wide avenue to amplify value, expand monetization opportunities, and fortify IP assets.

Establishing a VPM program may seem daunting initially, but the benefits it offers through an early constructive notice date are vital to maximizing patent value. VPM management software platforms can be helpful in streamlining this process. General counsel and attorneys must grasp the multitude of benefits VPM offers and encourage adopting VPM as an integral part of ongoing patent strategies. By embracing VPM, U.S. patent owners can elevate the strength and value of their portfolios, safeguard their rights, and provide the maximum options to help navigate the complexities of the intellectual property landscape with confidence.

This article should not be construed as legal advice or legal opinion on any specific facts or circumstances. This article reflects only the personal views of the authors and not the views of the authors’ firms. Consult your patent professional regarding your specific questions.