Practical Guide to: Product Markings

Product markings are markings applied to a patented product, to provide an indication to the general public that the item is patented. They have a variety of uses, including serving a notice to a potential infringer of the existence of the patents, so that damages can more easily be retrieved in infringement proceedings.

Through accurate use of product markings, an infringer can lose a defence they might otherwise have, of lack of knowledge of the existence of the patents. Product markings can be useful in other ways too, for example they may help to demonstrate to customers or investors that your products are innovative. Product markings tend to be applied to products either as physical markings, or virtual markings.

Physical markings – what are they?

• Physical markings are a list of patent numbers applied directly to the product
• The marking should usually have the word “Patent or Pat.” plus a list of the applicable patent numbers
• The marking should be applied directly to the product itself or its packaging
• All products in the batch should be marked in this way
• Where it is impossible to mark small products, the packaging, labelling or container can be marked as a substitute
• Physical markings are generally permitted in all territories
• Drawbacks include expense, difficulties in machining some items due to their size/shape or other constraints, and delays in keeping markings up to date
• Another drawback is difficulty in customising markings for the same product for sale in different territories, perhaps requiring new product molds, or retooling manufacturing processes

Virtual markings – what are they?

• Virtual markings are a list of patent details provided in a web-page, wherein the web-page address is physically marked on the product
• The marking should usually have the words “Patent” or “Pat.” plus a link to the web-page
• The web-page should clearly associate the patented product with the relevant patent numbers
• In some jurisdictions it may be advisable to include additional details on the web-page, such as the patent date and owner
• All products should be marked in this way, and the words “Patent” or “Pat.” should not be omitted
• The web-page should be continuously available (as far as possible) and free of charge to access
• The web-page should be kept up to date, with expired patents being removed
• Include in the list granted patents which are in force and can be asserted against an infringer
• Consider including pending applications when they are published, as in some countries provisional rights can be accrued from publication – however, be aware of the false marking provisions (see below)
• The link should be a direct link to a list of products/ sub-products and associated patents (with no through navigation required)
• It should be easy for a member of the public to associate a particular product with the relevant patents covering the product – it is advisable to include specific product model numbers (not just classes of products) and patent numbers
• A mere list of patents will probably be insufficient to meet the marking requirements – the idea is to make it easy for the public, and not create a research project for the public
• If making a custom product with no associated model number, but it is nevertheless covered by a patent, explain this on the web-page
• Virtual markings are generally permitted in all territories but not in China

What are the benefits of virtual markings?

• The owner can quickly and dynamically update patent information online without making expensive modifications to the manufacturing process
• A web-page enables a real-time list of patents to be maintained, wherein it is easy to add new patents, and remove expired/ abandoned patents
• Using virtual markings reduces manufacturing costs and facilitates the marking of small items
• Avoids problems with batches of products being released with outdated markings
• Using virtual markings generally improves access for the general public to patent information for your patented products

Is marking a requirement?

• No – there is generally no requirement to mark products
• In the US, UK, and elsewhere, a failure to mark a product appropriately can impact the damages recoverable in infringement proceedings
• The difference in damages obtainable can be significant, for example, in some cases where marking has been found to be absent or inadequate, this has caused losses of millions of US dollars
• Japanese patent law presently requires products to be marked, but there is no penalty for failure to do so

What is false marking?

• In some countries, there can be penalties for false marking
• Make sure markings are accurate and do indeed cover the products they are shown to cover, to minimise any risk of false marking
• Ensure that the patent markings do indeed cover the territories they are shown to cover (patents being jurisdictional rights that must be applied for separately in each territory)
• Promptly remove markings that relate to expired patents
• Be careful with marking products as “patent pending” since pending applications do not always reach grant, and have a claim scope which is in flux
• Do not use “patent pending” before a patent application has been filed
• For European patents, ensure to state in which countries the patent is validated in

Other points to note

• When creating your listings, consider whether a patent in question has method claims and/or apparatus claims which cover your product – ask a patent attorney for advice if unsure
• Ensure that any entities working under license or manufacturing contract are properly marking products
• Maintain records to show how products have been marked in case of any legal challenge
• There may be no harm in also including trade mark information for example as part of a virtual listing, but ensure there is no confusion to the general public

Key points

• Consider marking your products for more favourable damages in any future infringement proceedings
• Consider marking your products as a general deterrent to competitors, or to inform the public, attract customers or secure investment
• Check the rules on product markings in the relevant jurisdictions for your business
• Mark your products accurately
• Keep reviewing your markings, and remove expired/ abandoned patent markings
• If setting up a web-page for virtual markings, ensure it is continuously available and that the relevant patent numbers are easily accessible for each product or sub-product
• Monitor changes in the status and/or scope of your patents, and update your markings accordingly
• Talk to a patent attorney for detailed advice

We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys. To discuss the subject matter of this Guide, or for any queries, please contact Sarah Phillips, or any one of our attorneys.