In the UK, marking a product with details of a granted patent that has been obtained for that product may deter potential infringers from copying the product and may further improve the prospects of a patent owner being awarded financial remedies if infringement occurs. However, care must be taken when marking products with details of a patent, since marking a product with incorrect patent details can potentially give rise to a summary conviction and a fine. There is no requirement in UK law for patented products to be marked with patent details, and you are completely within your rights not to mark products with patent details if you so choose.
ADVANTAGES OF MARKING A PRODUCT WITH DETAILS OF A GRANTED PATENT
Advantages to marking a product with details of a granted patent may include:
- Providing a deterrent to third parties interested in copying the product by alerting the third party to the existence of the granted patent
- Improving the prospects of a patent owner being awarded financial remedies from an infringer of the granted patent but note this requires details of the granted patent to be provided in a certain form (see below)
WHAT TO INCLUDE WHEN MARKING A PRODUCT WITH DETAILS OF A GRANTED PATENT
If you wish to improve the prospects of being awarded financial remedies in the event that your patent is infringed, you may wish to mark your product with details of the granted patent in the following form:
- the word ‘patent’ or ‘patented’; accompanied by
- the relevant patent number(s); or
- an internet link to an address of a posting on the internet which is accessible to the public free of charge, and which clearly associates the product with the relevant patent number(s)
If your product is marked with details in this form, an infringer should not be able to avoid paying financial remedies for infringement of your granted patent simply by arguing that they were not aware (or had no reasonable grounds for supposing) that the patent existed.
Care must be taken to ensure that the product being marked with details of a granted patent is covered by the granted patent. We would of course be happy to assist you with determining whether this is the case.
Marking a product with an internet link rather than the relevant patent number(s) has been permitted since 1 October 2014. It is thought that providing an internet link rather than the relevant patent number(s) is advantageous as it will reduce the burden on patent owners in marking their products with relevant patent information and will also help the public access up-to-date patent information in relation to a product. The UK Intellectual Property Office (“UKIPO”) has published guidance regarding the form that the web page should take.
HOW TO MARK A PRODUCT WITH DETAILS OF A GRANTED PATENT
In relation to recovery of damages for infringement, the relevant provision of UK patent law refers to “application to a product” of patent details having the form set out above. For this reason, it seems that stamping, engraving or impressing patent details on the body of the product itself would provide the clearest route to obtaining the advantages discussed above.
For practical reasons, some patent owners choose to provide patent details indirectly in relation to a product (e.g. on packaging, on a tag/sticker, or on loose paper that accompanies the product, or on their website), rather than applying such details to the product itself. It is unclear whether a patent owner who provides patent details indirectly in relation to a product would obtain the advantages discussed above, but a patent owner might nonetheless derive some benefit from providing patent details in this way.
DANGERS OF MARKING A PRODUCT WITH INCORRECT PATENT DETAILS
UK patent law indicates that either of the following acts may lead to summary conviction and a fine:
- falsely representing that a product is patented; or
- representing that a patent has been applied for a product when either no such application has been made or any such application has been refused/withdrawn
It is therefore important to exercise caution when marking a product with details of a granted patent or pending patent application, and this caution should be exercised throughout the lifetime of the patent/patent application, since a change in status of the patent/patent application may necessitate a corresponding change in the marking of the product. For example, it would be necessary to stop marking a product with details of a granted patent if that patent is revoked or expires.
A possible benefit of marking a product with an internet link rather than with the relevant patent number(s) (see above) is that it may be quicker and easier to update a webpage than it would be to update the patent number(s) applied to a product, if there is a change in the status of a relevant patent.
MARKING A PRODUCT WITH DETAILS OF A PENDING PATENT APPLICATION
UK patent law does not provide a specific legal advantage of marking a product with details of a pending UK patent application, i.e. a patent application that has not yet been granted. However, marking a product in this way may be considered as being useful in alerting third parties to the existence of the pending patent application.
If you decide you would like to mark a product with details of a pending patent application, caution should be exercised, since any change in the status of the patent application (e.g. refusal) may necessitate a change in the markings applied to the product (see above).
CHOOSING NOT TO MARK PRODUCTS WITH PATENT INFORMATION
There is no requirement in UK law for patented products to be marked with patent details, and you are completely within your rights not to mark products with patent details if you so choose.