By: Paul G. Nagy, Partner, Berkeley Law & Technology Group, LLP
Patent marking can be an important consideration for patent owners seeking to preserve the ability to recover damages for infringement. While marking the patented article itself is generally preferred, the nature and size of semiconductor products can create practical challenges.
Marking the Product Itself
Patent law generally favors marking the patented article directly. For semiconductor products, the patented article may be a silicon die, wafer, or packaged integrated circuit. Where practical, a patent notice can potentially be applied directly to the product during semiconductor fabrication, for example, through photolithography or scribe-line etching, or by post-fabrication laser marking.
For very small semiconductor components, however, direct marking may be impractical because of the product’s size, the risk of damaging or defacing the product, cost considerations, or established industry practices.
Marking Semiconductor Packaging
When marking the article itself is impractical, marking the product’s packaging may provide an alternative. For packaged integrated circuits, for example, patent information can potentially be applied to the package itself, such as by laser etching or printing. A notice may identify the applicable patent number or use a “pat.” designation together with a virtual-marking website that associates the product with the relevant patents.
Marking intermediate packaging,such as trays, tape-and-reel packaging, or moisture-barrier bags,may also be appropriate where the semiconductor article cannot reasonably be marked. Nevertheless, reliance solely on packaging may require consideration of whether direct marking was actually impracticable.
Virtual Patent Marking
For products on which it is difficult to list multiple patent numbers, a virtual patent-marking approach can be particularly useful. A “pat.” notice accompanied by the address of a freely accessible website identifying the applicable patent numbers can avoid the need to place a lengthy list of patent numbers on a small semiconductor component.
Documentation can play a useful supporting role in a patent-marking program, particularly for semiconductor products that may pass through multiple stages of manufacturing, distribution, and sale. Product datasheets, technical manuals, catalogs, invoices, purchase documentation, and similar materials can identify the patents associated with a particular product and can direct customers and other members of the supply chain to a freely accessible virtual-marking website listing the applicable patent numbers. Such documentation can therefore help communicate the relationship between a product and any patents covering the product, and can supplement a physical marking appearing on the product or its packaging.
Documentation, however, should generally be viewed as supplemental rather than a substitute for physical marking. The statute setting forth the requirements for such a patent marking, 35 USC § 287, contemplates that a patent notice be “fixed” on the patented article or, where permitted because of the character of the article, on qualifying packaging. Accordingly, simply identifying patent numbers on a datasheet, invoice, website, or other accompanying document does not necessarily satisfy the physical-marking requirement. The same consideration applies even where the documentation is routinely provided to customers or accompanies every shipment.
This distinction can be particularly important in the semiconductor industry. A semiconductor product may be sold through several entities and may change form as it moves from wafer fabrication to die, packaging, assembly, and ultimately incorporation into a larger product. Documentation can provide valuable information at each stage. But such documentation does not necessarily travel with a patented article in the manner contemplated by marking under 35 USC § 287. As such, companies should consider documentation and virtual marking as components of a broader marking strategy rather than relying on documentation and virtual marking alone.
A practical approach is therefore to use physical marking wherever reasonably feasible, supplemented by documentation and, where appropriate, a virtual-marking website. This combination can provide a clear and consistent means of imparting notice of patent rights throughout the supply chain while addressing the practical difficulties of placing multiple patent numbers on small or highly integrated semiconductor products.
Practical Takeaway
For semiconductor manufacturers and patent owners, an effective marking strategy should begin with the patented article itself. If direct marking is impractical, the analysis should then consider whether the immediate packaging, or, in appropriate circumstances, other packaging, can provide the required notice.
Because semiconductor products move through complex supply chains and may exist in several forms, patent owners should evaluate their marking practices early and coordinate them with their manufacturing and distribution processes. A carefully designed marking program can help address the practical realities of semiconductor products while supporting the patent owner’s efforts to preserve its rights.