Effective as of May 1st, 2012, a revised Measure for Patent Marking published by the State Intellectual Property Office (“SIPO”) will replace the current measures that regulate how to mark a patented article.
Patent marking on a patented article is not required under the China Patent Act because marking does not affect any judgment of willful infringement in China. Although Article 17 of the China Patent Act indicates that a patentee has the right to label a patented article or the package of said article with an indication of its patent, marking does not serve as a constructive notice in patent enforcement and therefore will not affect damage awards in a patent lawsuit. In other words, the liability of an infringer is not mitigated by the fact that an article is not marked as patented.
Even though marking is not compulsory, the perception is that patent marking acts to enhance the popularity of a product. As a result, many companies mark their patented articles with an indication of the patents associated therewith as a form of advertising. Under the revised measures, marking of a grant patent shall include the following contents:
- An indication of the type of the patent right in the Chinese language, namely whether the patent right is that associated with a Chinese invention patent, a Chinese utility model patent, or a Chinese design patent.
- A showing of the patent number granted by the SIPO.
If an article is produced using a patented method, and if it is desired to provide an indication of the method patent on the packaging or description of the article, a proper Chinese description shall be made along with the marking, indicating that the article is produced utilizing a patented method.
Lastly, marking before the grant of a patent is not allowed under the current measures. Nevertheless, it is not uncommon to see a vague term or slogan provided on an article, indicating that the article is associated with a patent. However, the truthfulness of the term or slogan is unknown to consumers. The revised measures will address such a phenomenon through the regulation of markings related to patent applications that are pending. Namely, after the revised measures go into effect, it will be necessary for any marking related to a patent before grant to clearly indicate the type of patent that has been applied for and the patent application number, and to provide an indication with the following phrase: “patent application filed, patent right not yet been granted.”
As mentioned above, if a patentee would like to mark an article with an indication of a patent, the marking should comply with the measures stipulated by the SIPO. Failure to comply with the rules will result in the local patent administrative authorities ordering a correction or a fine of up to 200,000 yuan. If it is determined that a patentee has committed a false marking offense, he or she shall be subject to criminal liability.
In comparison with the situation in Taiwan, the current Taiwan Patent Act encourages patent marking by stipulating that, “[i]n case of failure to affix such marking, no claim for damages shall be allowed,” unless the infringer had known or should have known of the patent. However, in practice, when no patent marking is provided on an infringed article, courts are split as to whether they should presume that (a) the infringer has no liability or that (b) the patentee has no standing for a damage claim.
Article 98 of the amended Taiwan Patent Act, which is to be enforced in January 2013, deletes the disputed provision from the current law and further clarifies that:
“Where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer had knowledge or may have had knowledge with respect to the fact that said article is under patent protection.”
In other words, patent marking makes proving that an infringer had a purposeful intent an easier proposition. In the case where it is not feasible to mark a patented article or packaging, the patentee bears the burden of proving intent in patent infringement.
Also, under the current Taiwan patent law, a willful infringer may be required to compensate a patentee up to three times the damages; however, such punitive damage awards have been abolished from the amended Patent Act. In the near future, only when an infringer is found purposeful or negligent will a patentee be awarded damages.