Patent marking

Marking your product with details of a granted patent acts to notify third parties of the existence of the granted patent and there are benefits associated with this: as a deterrent and to improve the possibility of being awarded financial remedies in infringement proceedings.

• Patents are an enforceable right to a monopoly and, primarily, function to deter third parties from infringing those monopoly rights. Thus, alerting third parties, who may be interested in making, selling or importing the same or similar product, to the existence of the patent may be sufficient to deter them from activities that may infringe your rights.
• Should you need to enforce your patent against a third party infringer, marking your product with details of a granted patent helps to increase the prospects of being awarded financial remedies from the infringer.

If a third party is found by the court to have infringed a valid granted patent, the patent owner (or in some cases the exclusive licensee) may be entitled to claim damages resulting from the infringement, or an account of profits derived from the infringement, from the third party. The third party may also be liable for the patent owner’s legal costs.

However, damages or an account of profits is not available if a third party is able to prove that, at the date of the infringement, they were not aware, and had no reasonable grounds for supposing, that the patent existed.

Thus, if a patented product is correctly marked as such, it reduces the risk that an infringing third party can avoid damages or an account of profits being awarded by the court.

In the UK it is sufficient to mark your product with details of the granted patent using the word ‘patent’ or ‘patented’ accompanied by either:

1. The relevant patent number(s); or
2. An internet link to an address of a webpage on the internet which is accessible to the public free of charge, and which clearly associates the product with the relevant patent number(s).

Guidance on the form that the webpage should take is available from the UK Intellectual Property Office (“UKIPO”) here.

It is worth noting that the use of an internet link to mark a patented product (sometimes termed “virtual marking”) is accepted in the UK and certain other countries. Furthermore, there are some obvious advantages to using an internet link. For instance, a webpage can be maintained over a long term at low cost and allows the status of a patent or application to be updated quickly. In contrast, if a change to a manufacturing or assembly process is required to update the status of a patent on a product (e.g. an adjustment in an injection mould) or its packaging this may be both costly and time-consuming.

The UK patent act uses the wording “application to a product” in relation to marking a product with patent details as described above. Accordingly, stamping, engraving or impressing patent details directly on the product itself may be the most obvious way to comply with the requirements of the statute. However, many patent owners decide to display details of the patent indirectly in relation to a product (e.g. on packaging, on a tag/sticker, or on an information pamphlet that accompanies the product). There is some uncertainty as to whether a patent owner who exhibits patent details indirectly in relation to a product would mitigate the risk of a third party avoiding financial remedies in infringement proceedings. Nevertheless, marking a product indirectly may still provide the patent owner with some benefits, e.g. deterring third parties from potential infringing acts.

It is permissible in the UK to mark a product with details of a pending UK patent application (or EP patent application that designates the UK), e.g. using the term “patent pending” and details of the application(s). Moreover, there may be good reasons for doing so, e.g. to notify third parties that a patent application exists. However, caution should be exercised as it is an offence to mark a product with incorrect patent details (see below).

Thus, if you decide to mark your product with details of a pending patent application, it would be advisable to ensure that a procedure to change the markings applied to the product can be implemented expediently, since any change in the status of the patent application (e.g. refusal) may demand a change in the markings applied to the product. Moreover, amendment of the patent application during the examination procedure may mean that some products are no longer covered by the patent. For these reasons, it may be preferable to mark products covered by pending applications with an internet link to ensure that any changes to the status of the patent application can be reflected on the webpage immediately.

In the UK, marking a product with incorrect patent details could lead to a summary conviction and a fine. Specifically, UK law prohibits:

1. falsely representing that a product is patented; or
2. representing that a patent for a product has been applied for when either no such application has been made or any such application has been refused/withdrawn.

Notably, the statute provides a period of grace following the expiry or revocation of the relevant patent or application during which representation as a patented product does not constitute an offence. The period is considered to be an amount of time that is “reasonably sufficient” for the person in question to prevent or cease such representation. Thus, when marking a product with details of a granted patent or pending patent application, it is important to be alert to any changes in the status of the patent(s)/applications(s) throughout the lifetime of the patent(s)/application(s) and to implement changes to the marking as soon as possible after a status change. For instance, if a pending application is amended such that it no longer covers a product, it would be necessary to stop marking the product with details of the pending application.

It should be noted that other countries have similar penalties for falsely representing that a product is patented. Thus, if marked products will be exported from the UK, we would recommend that you ensure that the marking complies with the requirements in the countries of import. We would be happy to assist you with this assessment.