Method And Apparatus Claim Patent Marking Statute Requirements

Method And Apparatus Claim Patent Marking Statute Requirements

August 2, 2022
Walker Weitzel
Patent Law , Patent Learning

Patent Marking Statute

According to the Patent Marking Requirements Act,35 U.S.C, Patentees can notify the public that the product is patented by marking it with the word “patent” or “pat” along with the patent number. The patent number can also be affixed on the label or packaging if the product cannot be marked. 

Marking the product provides protection to the patentee, allowing for damages to be calculated and collected from the moment the patent was infringed rather than waiting for the legal notice (for example, a letter or filing of an application for the official complaint of patent infringement or by receipt of a cease and desist letter).

Soverain Software LLC Vs INC,  USPQ2d 1208 (E.D. Tex. 2005)

Soverain made the case of patent infringement on Amazon on patents related to:

  1. Methods for controlling and monitoring access to networks through the use of a session identifier. The system allows authentication of multiple service requests from the web server from the same buyer with control access.
  2. A network-based sales system that includes payment, buyer and seller computer authentication with a shopping cart.

Both the patents enable the processing of shopping and payment of products over a single network and contained a method and apparatus claim. 

Amazon argued that Soverain did not meet the patent marking statute as the patent number was inserted in the software code and accompanying documentation. Hence the infringement damages should be calculated from the date of the lawsuit filed. 

Amazon’s motion was denied by the Court since it was a question of fact and cannot be decided on summary judgement. 

Under Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6F.3d 1523, 1538 (Fed. Cir. 1993), the Court states that a tangible item that can be marked must meet the marking statute requirement and intangible items are those that cannot be marked.

Soverain stated in defence that the failure to comply with the marking statute was because their patent fell under the claim directly related to the method claim. They further stated that the patented websites were intangible and cannot be marked. To counter Soverain’s argument about their websites being intangible, Amazon showed evidence with examples of previous websites that had been marked with patent numbers.

Therefore the court granted the motion in Amazon’s favor, declaring that Soverain’s licensees did not meet the marking statute requirements. 


According to the patent statute requirements, tangible items must be clearly marked to identify the patent, whereas intangible items can’t be marked. Soverain argued that its websites did not include the patent number because it was an intangible item which fell under the method claim. Amazon showed examples of previous websites with patent numbers thereby negating Soverain’s argument that their websites could not be marked. Thus winning the case against patent infringement against Soverain. 

Therefore it is essential to follow or meet the US patent Statute requirements to protect against patent infringement and collect damages before the date of the actual lawsuit filed.

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