This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.
Some countries, including the UK and the USA, have provisions that restrict the recovery of damages from an infringer of a patent if the infringer can show that they were unaware of the existence of the patent. While these provisions can be difficult for larger companies with their own R&D departments to rely on, some smaller entities may be able to make use of this defence.
One way for a patentee to mitigate the restrictions on the recovery of damages is to mark the product with an indication of the protecting patent(s). A potential infringer is thereby put on notice of the existence of the patent(s) and cannot rely on asserting their innocence as a defence. To properly notify the 'infringer' it is necessary to indicate the patent number, simply marking with 'patent' or 'patent pending' is not adequate. In the case of the USA, marking in this way can be of particular benefit since triple damages may be awarded in the event 'wilful infringement' by an infringer can be shown.
Marking a product in this way is not without its drawbacks. In the UK, it is a criminal offence to falsely indicate that a product is patent protected. Thus, it is important that any expired or invalidated patents are no longer marked on the product. Accuracy of the patent mark is key and keeping the patent information up-to-date can therefore lead to a high administrative burden on the patentee.
The law in the UK has recently been changed to allow a product to be marked with a webpage address (internet link) that contains an indication of the relevant patent(s) associated with a product. The law in the USA, where the practice is referred to as 'virtual marking', also changed with the introduction of the America Invents Act, which entered into force in 2012/13. An example of virtual product marking can be seen here: www.tivo.com/patents.
Because a webpage can be quickly and easily updated, the administrative burden on the Patentee should be reduced and the pitfalls of inadvertently falling foul of the false marking provisions be avoided. A single webpage could also be provided that details patents in force in both the UK and the USA. However, there are some conditions that the webpage must meet. The webpage must clearly associate the product(s) (and models) with the relevant patent numbers. The webpage must be accessible to the public free of charge. A company homepage is not likely to suffice unless that webpage has the required clear association of patent numbers with the products. Irrespective of how the product is marked, accuracy will still be required.
Finally, it is worth considering whether patent marking is really useful since the marking will alert competitors as to which patents the patentee considers to cover which products. Disclosing this information may remove the uncertainly in a competitor's mind as to whether their product is indeed covered by any of the patentee's patents. Furthermore, the competitor might then decide to target certain patents for invalidation or opposition. It is unsurprising then that some patentees do not wish to make their competitor's life easier and so prefer to keep the competition in the dark by not marking their products.
