With some regularity we are asked by our clients whether it is permitted to put ‘patented’ or ‘patent pending’ on their product, in order to let the public know their product is protected by a patent or that a patent application is pending. This phenomenon is referred to as ‘marking’ in patent law. It is good to keep in mind that the regulations in this regard differ from country to country. Therefore, we advise to check and observe what the relevant regulations are in each relevant country. Nevertheless, we will provide a number of guidelines below to offer some guidance.
Why is marking important? You own a patent or applied for a patent and of course you want others to respect it. Marking a patented product has a preventive effect. Although the relevant patent or patent application will usually be published in a patent register, not everyone reads everything. By indicating on or with the product that the product has been placed under patent protection, or that a patent application has been filed for it, all doubt is removed in that respect and potential infringers are thereby warned.
As an owner of a patent, you can demand that the infringer ceases from its infringing activities. In general, patent law will also provide for a possibility to claim damages. This is often subject to the requirement that the infringer knew that he was committing an infringement. Particularly in Anglo-Saxon countries such as the US and the UK, it is sufficient for this to be indicated on or with the product for which the patent protection applies. Then, the person cannot argue that he or she was not aware that the patent was infringed.
Make sure that the marking you want to use is not misleading. Stating that patent protection applies when in reality this is not the case in the country concerned, can be regarded as unlawful. In Germany in particular, an incorrect, ambiguous or incomplete description quickly leads to liability and an obligation to pay damages. This applies in particular to the general wording ‘patent pending’ which should not be used in Germany. It is therefore important to state the applicable patent or patent application correctly and as completely as possible and not to create any confusions. In addition, it is important to remove the marking immediately as soon as the underlying patent lapses or the patent application is rejected or not pursued.
In the first place, the applicable patent protection can be indicated directly on the product. However, it is also possible to display the marking on the packaging of the product. Alternatively, reference can be made to a website where the relevant patent details can be found. The latter is called “virtual marking” and has the advantage that the product or packaging does not have to be adjusted every time a patent is granted or expires. The website in question must then be free and publicly accessible.
Examples of common markings are:
|Netherlands||Patent pending no. [number] NL|
|Patent NL [number]|
|European Patent EP [number]|
|USA||Patent Pending US Ser.No. [number]|
|Patented US [number]|
|Virtual||Patented or Patent pending, see website.com for patent details|
Without a doubt, marking on or with the product will have a preventive effect and, moreover, in a number of Anglo-Saxon countries in particular, this is sufficient to qualify for compensation if the patent is nevertheless infringed. However, for the remaining enforceability of your patent it is not necessary to affix a marking, yet in the event of an incorrect or misleading marking you are under certain circumstances liable for the damage caused to a third party. Hence, if you want to use marking, make sure to check the relevant country’s legislation on patent marking and avoid misleading marking. If you want to state that your product is under protection or that you have applied for a patent, do it correctly in each country and avoid misleading.
Would you like to know what you can do best in your specific situation? Please feel free to contact us. We are happy to advise you.