Patent marking, the practice of labeling products to indicate protection by one or more patents, is a vital communication tool between patent holders and the public. In general, intellectual Property (“IP”) markings offer significant advantages to IP owners by preventing or deterring innocent infringement and, in some jurisdictions, strengthening their position in legal disputes concerning infringement. Patent marks also enhance the public perception of the asset as innovative and legally protected, making it more desirable and valuable.
Please reach out if you would like us to contact counsel in other jurisdictions to advise on patent marking there.
Patent Marking in Canada
Marking is not mandatory and does not impact damage recovery.
Patent marking is not legally required in Canada, meaning patent owners (“patentees”) are not obligated to mark their products or processes to maintain patent protection. The presence or absence of patent markings does not affect the ability to recover damages because Canadian courts do not consider wilfulness of infringement in this context.
However, falsely marking a product or process can lead to serious consequences. Any person caught inaccurately or falsely marking may be found guilty of an indictable offence and fined or imprisoned (Patent Act s. 75(1)). Therefore, patentees must be careful when marking to ensure that they are not deceiving the public.
As a best practice in Canada, if a patent application is pending, applicants may indicate “Canadian Patent Application Number 0,000,000”. Upon receiving a granted patent, it is permissible for patentees to use “Canadian Patent Registration Number 0,000,000”. This careful approach ensures compliance with the law and maintains transparency to the public.
See our discussion below for virtual marking options.
Patent Marking in the United States
We are not U.S. lawyers, but we understand that marking is not mandatory, however it is required for damage recovery. For updated advise please contact us to research out to U.S. counsel.
As of March 2024, we reviewed the U.S. Patent Statute which requires patent marking for a patentee to recover damages for patent infringement (35 U.S.C. § 287(a)). While there may be exceptions to this rule, it appears generally advisable for a patentee to mark all patents appropriately since recoverable damages from patent infringement only begin on the date that the infringer receives “constructive” or “actual” notice of the alleged infringement.
“Actual” notice of patent infringement involves directly notifying through means like a letter or service of an infringement complaint. “Constructive” notice of patent infringement is achieved by adhering to the marking requirements outlined in subsection 35 U.S.C. § 287(a). To satisfy the marking requirements for constructive notice under U.S. law, the product or process must indicate the word “patent” or the abbreviation “pat.” followed by the U.S. patent registration number or a website address that associates the patented article with the patent number, all in legible font size.
Patent Marking Best Practices
While patent marking does not seem to be legally required in most jurisdictions, it is advisable to obtain advise from a lawyer in each jurisdiction of intent and at least to consider marking your patented product or process appropriately to enable recovery of damages for patent infringement. To ensure proper notice is made it may be best to mark your product or process with the jurisdictions name followed by the word “patent” or “patent pending” (in the appropriate language) and the corresponding patent number or application number. For instance, “Canadian Patent No. 0,000,000” or “Canadian Patent Application No. 0,000,000”.
Patentees should ensure that they are adhering to the patent laws and regulations of the relevant jurisdictions to guarantee protection and compliance. This involves staying informed about specific requirements and guidelines related to patent marking to avoid false or inaccurate marking consequences. Patentees should also extend this responsibility to their licensees, requiring them to adhere to appropriate marking practices. Accordingly, patentees should monitor licensee products to ensure ongoing compliance with the requirements established by the jurisdiction.
Given that the risks of incorrectly marking products may be significant, patent marking should be used after development of a coordinated strategy made under guidance of intellectual property professionals across all jurisdictions of concern.
In summary, different jurisdictions have different rules about marking patents. However, most agree that marking your product or process with patent information is vital. I helps to inform the public about protection, deters infringement, establishes patent awareness, and, in some jurisdictions, helps you claim damages for patent infringement. Knowing and following these rules is crucial for effective patent marking and managing intellectual property.
Virtual Patent Marking Option
Virtual patent marking options have recently become available and recognized by various jurisdictions globally. Patentees can now decide whether they prefer physical or virtual patent marks.
What is Virtual Patent Marking?
Virtual patent marking, also known as “e-marking” or “web-marking”, involves providing patent information through a public, online website address. While historically, patent marks were physical inscriptions of patent numbers on products, jurisdictions like the U.S. have made changes to their patent marking laws authorizing virtual marking. For instance, instead of engraving “Patent 0,000,000” on golf club handles, manufacturers now have the option to engrave the word “Patent” followed by a public internet address that associates the patent with the corresponding patent numbers such as, “Patent: www.company.com/Patents”. Accordingly, a virtual mark is a physical inscription on a patented item that directs consumers to a website to learn more about the relevant patent(s).
What are the benefits of virtual patent marks?
Virtual patent marks offer unique advantages over physical patent marks. Most notably, virtual marks simplify the process of updating information on a product’s IP status and avoid costs associated with updating marked products.
Virtual patent marks also establish a central repository for all patent information. The centralized approach allows for a single patent mark on products or processes distributed globally which streamlines management and consistency across international markets.
In the U.S., virtual patent marks may be strategically advantageous in business sales or when selling a patent portfolio because virtual marks provide leverage for higher patent damages by contributing to earlier constructive notice dates.
Yet, the adoption of virtual patent marking methods might pose challenges for patentees lacking the capacity to create or acquire a webpage for sharing their patent information. Moreover, the virtual patent mark webpages must be accessible to the public without charge or any other barriers (35 U.S.C. 287). The webpages must also clearly identify individual products along with their corresponding patent numbers, ensuring clear and accurate presentation (35 U.S.C. 287).
Solutions to help patentees benefit from the virtual patent marking option are being provided by businesses such as TerrifioMarkr, which is an online tool that offers virtual patent marking management assistance. Examples of virtual marking webpages include: https://www.flo.com/patents/ and https://www.logitech.com/en-us/about/virtual-patent-marking.html.
Ultimately, when deciding whether to choose the physical marking method or the virtual patent marking method, patent owners may consider: (i) the time and money it would take to update their virtual marking internet information sites with accurate and complete lists of patented articles; (ii) the privacy concerns of website visitors; (iii) licenses and their terms that require consistency of patent marking; and (iv) damages that may be precluded from recovery if the patentee or their licensee does not properly use patent marking. As virtual marking is relatively new, courts will continue to address the various nuances of virtual marking to balance reasonable good faith public notice and what is reasonable under each patent owner’s different situations.
If you have reason to believe that your patent has been infringed or you are interested in applying for a patent, please contact us and request a consultation.
This article is provided for informational purposes only and is not legal advice. For further information, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.