Patent marking involves marking a patented product with its patent number. This serves to inform the general public of the existence of a patent granted for the product. It also allows the patent owner to claim that the infringer had knowledge of the patent, and to prevent the infringer from claiming “innocent infringement” as a defence.
In the United States, patent marking can be accomplished by (i) physically marking the product with “Patent” or “Pat.” followed by its patent number, or (ii) simply affixing on the patented product as follows: “Patent” or “Pat.” along with an accompanying URL address of an internet website that is accessible to the public without charge and that associates the patented article with the number(s) of the patent.
The following discusses the legal requirements for patent marking in ASEAN countries.
Under Singapore Law, there is no legal requirement that any product for which a patent has been applied for or been granted be marked with the patent number. As such, it is not legally compulsory to mark patented goods.
However, marking all goods for which a patent has been granted in Singapore is highly recommended in order for the Patentee to recover damages in the event of patent infringement.
Under Section 66 of the Singapore Patents Act, patent infringement is a strict liability statutory tort. This means that so long as the act of infringement is committed by a person without the consent of the patentee, he is deemed to have infringed the patent. It is not necessary to show that the infringer was aware of the patent to establish infringement. However, under the Singapore Patent Law, the infringer may claim the defence of “innocent infringement”.
Section 69 of the Singapore Patents Act provides that no damages shall be awarded or an account of profits ordered where a defendant proves that ‘at the date of the infringement, he was unaware that a patent existed.’
Moreover, Section 69(2) of the Singapore Patents Act states that “a person shall not be taken to have been aware or to have had reasonable grounds for supposing by reason only of the application to a product of the word “patent” or “patented”, or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words.”
Thus, the patentee should mark their products with the patent number so that when the product is put in the market, this serves to inform the public and make them aware that the products are under patent protection in Singapore and it will be difficult for the defendant to deny knowledge of the patent.
Section 80 of the IP Code provides that patent markings are needed as an indication or as a warning to the public that such product or process are patented by placing the words “Philippine Patent” along with the number of the patent. Furthermore, under this section, it is presumed that the infringer had known of the patent if on the patented product, or on the container or package in which the article is supplied to the public, or on the advertising material relating to the patented product or process, are placed the words "Philippine Patent" along with the number of the patent.
Malaysia, Thailand and Indonesia
These countries do not have any laws or regulations pertaining to patent marking. As such, there is no legal requirement for the patent owners to mark their patented products. However, the laws in these countries also do not prohibit patent marking on patented products. It could be beneficial to do so as this serves to inform the public and make them aware that the products are under patent protection and any potential infringers would think twice before infringing the patented product. However, it is important not to confuse or mislead the public in respect of the information provided in the patent marking as there are laws in place in these countries that prohibit false marking of an article or misleading advertisement/labelling.
In view of the above, it is highly recommended to properly mark a patented product. For a patent to be properly marked, a clear and visible specific patent number procured in that country must be on the product. If it is not possible to mark the item properly due to the shape or configuration of the apparatus or system, an associated package holding the apparatus or system may be marked. However, it is important to note that having the word ‘Patent’ or ‘Patented’ alone will not be sufficient unless it is accompanied by the patent number.
Another important point to take note is that the patentee must make sure that the marked product is in fact patented, because making false claims is a serious offence under the laws of these countries.