What is patent marking?
What does this mean in practice?
Is patent marking required by law?
Applicants apply for patents in order to protect their inventions, either as a tool to prevent others from infringing a patent granted on such an application, or to license, cross-license or negotiate with others, with a view to monetising their patents. For these reasons, once a patent is granted, the owner thereof may want to make others aware of its existence. Patent attorneys might advise patent owners to mark their products with the words "South African Patent No. X". This article looks at what this means, how it can affect patent owners' ability to monetise their patents, and whether patent owners are required to add such marking.
The South African Patents Act provides that patentees are not entitled to recover compensation in respect of patent infringement from defendants who prove that, at the date of the infringement, they were not aware, and had no reasonable means of making themselves aware, of the existence of the patent. The marking of an article with the word "patent" or "patented" shall not be deemed to constitute notice of the existence of the patent "unless such word . . . is accompanied by the number of the patent".
For the purpose of recovering compensation, potential infringers may be made aware of the existence of the patent by a means other than patent marking – for example, by a letter notifying them thereof, but patent marking is a simpler and recommended means of making others aware of the existence of the patent.
The South African courts have not interpreted the above provision of the Patents Act. But the purpose of this provision is that the law requires, in order to recover compensation, a notification of the existence of the patent by identifying the number of the patent, such that infringers may have a reasonable means for making themselves aware of the existence of the specific patent. The implication is that the marking of a product with the word "patent" or "patented" unaccompanied by the number of the patent would not be a reasonable means for infringers to make themselves aware of the existence of the patent, and the marking of an article with the word "patent" or "patented" along with the patent number shall be deemed to constitute notice, in order to recover compensation.
What does this mean in practice?
Two questions may spring to mind when considering how to mark a product in light of the purpose of the above provision:
- Must the actual product or article itself be marked, or can the packaging be marked?
- Is it possible to mark a product "virtually" by using wording that points to a webpage where the patent numbers are listed?
Patent marking on packaging
Patent marking on the packaging may be interpreted to fall within the meaning of the provision, as it provides a notification such that infringers may have a reasonable means of making themselves aware of the existence of the patent. Packaging for a packaged article remains together with that article until separated from it. It might be quite difficult to argue successfully that one only considered the physical article itself, and not its packaging, when determining whether the article might have patent protection.
Virtual patent marking
Similarly, the inclusion of a web link on the product or packaging next to the word "patent" or "patented" that includes the specific numbers of the relevant patents, may be interpreted to fall within the meaning of the provision above. In such a case, the word "patent" would be accompanied by the number via the link and would further constitute notice of the existence of the patents for the purpose of the Patents Act – in other words, it provides a "reasonable means". It would be sensible only to provide the specific patent numbers relating to the relevant product, or at least clearly to identify the relevant patents.
One approach that may be taken into consideration in South Africa is that set out in UK Intellectual Property Office (UKIPO) guidance from 2014, which states that virtual marking is a valid form of patent marking, "provided that the webpage clearly associates the patent number with that product". The guidelines include that the information provided via the webpage must be clear and accessible, "making it easy for the public to ascertain which patents apply to the product". The guidelines also state that it is unlikely to be sufficient to provide the web address of the home page of a company website, unless there is a clear association between the product and the relevant patent number on that home page.
The risk exists that, should the South African courts be faced with this issue in the future, they may give a contrary interpretation that requires the physical presence of the number alongside the word "patent" or "patented" on the article, and that the inclusion of a web link referring a person to the number of the patent is not a reasonable means for providing notice of the existence of the patent. This interpretation is probably unlikely given the times we live in and the approach of the UKIPO, but it is nevertheless worthwhile keeping in mind.
Is patent marking required by law?
The law does not require patent owners to mark their patented products or articles, and there are no penalties for not doing so. However, should a patent be infringed, patent owners may not be able to recover compensation arising from the infringement if they did not provide reasonable means for defendants to make themselves aware of the existence of the patent.
Finally, it is important to be aware that the South African Patents Act provides that it is an offence to represent falsely that any article is a patented article, and any person doing so is, on conviction, liable to a fine not exceeding 1,000 rand or to imprisonment for a period not exceeding 12 months, or to both a fine and imprisonment. Therefore, products (or packaging) should only be marked where there is a granted and in-force patent relating to that product.
For further information on this topic please contact Patrick O'Brien or Hugh Moubray at Spoor & Fisher by telephone (+27 12 676 1111) or email ([email protected] or [email protected]). The Spoor & Fisher website can be accessed at www.spoor.com.