We continue in our series of snap-shots of changes to US patent law, as a result of the Leahy-Smith America Invents Act. This article looks at recent amendments concerning marking of patented products.
In the US, damages for patent infringement are only awarded for infringing actions that occur after the infringer has had notice about the patent rights.
Providing actual notice to an infringer, for example, notifying an infringer directly, requires diligence to watch the market and actively notify infringers. Damages are only recoverable for infringing actions from the time the patentee notifies the infringer.
These difficulties can be resolved by marking a product, or its packaging to provide notice to the public of patent rights, or in the case of pending applications, potential rights. You may have noticed products marked with ‘Patented’ or ‘Patent Pending’ followed by a number. By such marking, constructive notice is provided to the public, and it does not require the patent owner to actively notify infringers, thereby reducing effort and maximising the potential damages recoverable.
There is an underlying public interest that products without corresponding patents should not be marked as having patent rights as it may assert a monopoly that unfairly reduces competition in the market to the detriment of consumers. To protect the public, a person who falsely marks a product as patented in the US could be liable for a fine of up to US$500 per falsely marked article.
For a manufacturer, there may be logistical problems in keeping up to date with correct marking of products, for example, where the marking is etched into the mould for the product.
To alleviate this burden on manufacturers, recent amendments now exclude from ‘false marking’, products that are marked to indicate a patent which covers the product where the patent has since expired.
In recent times, there have been a number of cases of private individuals, including those without an interest in the patents or products in question, suing entities that falsely mark their products as a patented product. The incentive was that under previous U.S. law, any person could commence the action and was entitled to receive one half of the fine.
The law has now been amended so that only the United Stated Government may sue for the fine.
However, a private person may still sue an entity falsely marking products as a civil action, but only if they can prove they have suffered a competitive injury, and damages payable will be to compensate for such injury.
Another change is the inclusion of ‘virtual marking’ as a form of patent marking, whereby patent information for the product is by reference to an internet address. The internet address, in turn, will contain the necessary patent information, including the patent or patent application number(s). Advantageously, the contents of the internet address may be updated to reflect the correct patent information at the time. Virtual marking provides patent owners with an easier to manage, more flexible approach to patent marking, especially whilst patent applications are still pending.
Products may continue to be marked with ‘Patent’ or ‘Patent Pending’ with the appropriate numbers as in the past. Advantageously for manufacturers, it is no longer a violation of US patent law to continue marking products with patent information after the patent has expired.
Another method of marking products is to include on the product, or packaging for the product, virtual markings. As an example ‘For patent information: www.examplecompanywebsite.com/patents’. This address should be used in conjunction with a free to access webpage containing information that associates the product with the corresponding patent or patent application number(s). We would advise maintaining dated records of changes to the webpage, as this may be used as proof of public notice.
As patent marking requirements vary in each jurisdiction, it is important to seek professional advice on how to mark products for the target markets. However, we make note of some general points.
A patent for an invention in one country does not translate to a patent in the US. Therefore, if a product is covered by a patent in a country, but not in the US, it can violate US false marking laws if it is marked as patented without an indication as to which jurisdiction it is patented in. Therefore it is recommended that any patent markings should include reference to the respective country and patent number.
In Australia, patent markings and notice are not required to claim damages for infringement. However, patent marking on a product means an infringer cannot claim innocent infringement of the patent as a way of minimising damages. For that purpose, Australian law provides that products should be ‘marked so as to indicate that they are patented in Australia’. We recommend that the Australian application number be included in the marking, or with a virtual marking as discussed above.
This article was written by Tracey Hendy, Special Counsel.