February 8, 2012
Barbara M. Fornasiero
Cell: 586-817-8414

New Virtual Marking Provision in Patent Reform Brings Patent Protection Relief to Manufacturers, Consumer Product Makers

“An Opportunity to Re-Open Conversation Between Suppliers and OEMs
about Product Marks”

ANN ARBOR – Eric Sosenko, a shareholder in the Ann Arbor office of Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the U.S., says a little discussed change in product markings under patent reform makes it easier for manufacturers and consumer products companies to protect their patents and keep patent information current without having to worry about referencing numbers or patent pending status. It’s called virtual marking and all it requires is for the company that owns the patented product to mark the product or the product packaging with the company’s website.

“The web address is now considered adequate to cover a variety of patent situations,” explains Sosenko, who leads Brinks’ patent reform task force. “The hassle of marking a product is eliminated with virtual marking because the website can have a page identifying the patent for the particular product.”

Patent reform also eliminated the $500 false marking fine that could be levied for each product that did not have a valid patent number or status listed. The lure of the fines, which could run into the tens of thousands, created a cottage industry of individuals and groups who trolled products for false marks and sought to collect money on each improperly marked product.

“The elimination of the fine and the introduction of virtual marking are two examples of where patent reform gets it right,” says Sosenko.

In the auto industry, virtual marking gives suppliers an opportunity to re-open the conversation with Original Equipment Manufacturers (OEMs) about marking products in general.

“Historically, OEMs do not like to have any marks on their products, but the imprinting of a website address seems much less invasive,” notes Sosenko. “I think some suppliers will pursue the concept of product marking again now that virtual marking is an option.”

Before virtual marking, there was also the inclination by some in the consumer products industry not to mark all off their products because the marking could become outdated when the patent expired or was otherwise changed. But Sosenko says virtual marking should shift that hands-off approach, which can result in a patent holder’s inability to recover damages for patent infringement.

“To claim an infringement, the infringer has to have known the product was patent protected. With the ease of virtual marking, there’s a much stronger argument to be made for patent owners to adopt a comprehensive product marking strategy,” affirms Sosenko.

Brinks Hofer Gilson & Lione is one of the largest intellectual property law firms in the United States and serves the intellectual property needs of clients around the world. Brinks has 140 attorneys, scientific advisors and patent agents who specialize in intellectual property litigation and all aspects of patent, trademark and copyright law. The firm also advises on issues relating to intellectual asset management, trade secret, unfair competition, and technology and licensing agreements. Brinks routinely handles assignments for companies in the electrical, chemical, and mechanical engineering sectors; the biotechnology, pharmaceutical and nanotechnology industries; and for companies whose work relates to Internet and computer technology law. The firm’s trademark practice works on behalf of clients who deal in a wide variety of products and services. Founded in 1917, Brinks is based in Chicago and has five additional offices across the country, including Ann Arbor. More information is available at