It has become common practice in modern advertising for innovation-driven companies to shout about the patent rights protecting their products, including marking products with patent numbers. Doing so also acts as a deterrent to infringers and can increase the likelihood of successfully claiming damages where infringement does occur. However, the practice does not come without risks.

Many companies shout about their patent protection in advertising as a means to promote brand attributes, such as innovation, uniqueness and quality. In a 2016 TV ad campaign, for example, car manufacturer Audi claimed it had filed 3,000 more patents than Nasa in seeking to create the best car. Others talk frequently about ‘patents pending’ or choose to mark their products with patent numbers, both as a means to improve the brand value of goods and as a deterrent to competitors and counterfeiters. Marking the products, however, does carry certain risks.

“Patent and design marking is complex issue,” explains Eric Siecker, Managing Director – Patents at Novagraaf in the UK. “Adhesive decal might be easier to maintain, but permanent marking, such as stamping or casting, is expensive to start and change. If a right expires, is abandoned or invalidated, then companies will no longer be able to mark their products with that patent or design number. Stopping the application of the marking during production can be difficult, and there will also likely be products already in the distribution chain that may need to be updated too.”

Eric explains that, if no correction takes place, the product owner may be open to claims of false marking, misrepresentation and/or unfair competition. In addition, patent and design rights tend to be active in a limited number of jurisdictions only. If a product is marked with language that indicates the product is covered by a patent right and that product is being used or sold worldwide (i.e. in territories where no such patent protection is in place), then that too could open the door to claims of false marking.

Reasons for marking products

Over and above the marketing benefits, by far the most important reason for marking products with registered patent or design rights is to increase the likelihood of successfully claiming damages for infringement, says Eric.

This is because damages are not payable by a registered design infringer who is able to prove that at the date of the infringement they were not aware, and had no reasonable grounds for supposing, that the design was registered. If a product is marked with the IP right in question then the infringing party will not be able to deny knowledge of the existence of the IP right. Accordingly, marking on the product will also play a role in deterring copies (as it is clear that the product owner is serious about its IP rights).

Good practice in the UK

As of 1 October 2017, registered design owners in the UK have been able to mark their products with links to an internet site, allowing the relevant data to be updated more accurately. A similar system has been in place for patents since October 2014.

As the UK IPO explains in its guidance: “Removing the need to mark numbers directly on the product will reduce burdens and costs for businesses and individuals who own registered designs, and will make it easier for the public to access up-to-date registered design information in relation to a product.”

Of course, registered design owners continue to have the option of marking their product with the relevant registered design numbers rather than an internet URL. They also continue to have the option of not marking their products at all (although, as noted above, this may reduce the likelihood of successfully claiming damages from an infringer). It is important to note too that the change does not apply to Registered Community Designs.

“Virtual marking systems take away many of the risks associated with marking products, as the data is much easier to add, amend or delete; however, virtual marking is not yet universally accepted,” comments Eric. “That said, it is very likely this will improve and appears to be the way forward.”