Most consumers will have seen or heard of a product marked as ‘patent pending‘ or similar. The phrase is commonly used in marketing campaigns to enhance the unique appeal of a product; a sales pitch to customers that this technology is like nothing they’ve experienced before. But what does it actually mean and what legal protection does it offer the product’s inventor?
This article explores the concept of patent marking, the real meaning of patent pending, and at what point you as an inventor or product owner should mark your product.
What is patent marking?
Patent marking is when a product is labelled with information about the patent covering the product. This can include details of a granted patent or when a patent application is pending (eg: patent pending).
What is the purpose of patent marking?
Patent marking ensures that product users are aware of the product’s patent status.
Marking a product as patent pending (or similar) does not provide any legal protection. Rather, the primary purpose of marking a product is to put potential infringers on notice by providing a warning that steps are being taken to protect the invention. This improves the prospects of recovering damages for infringement.
Marking is especially important for jurisdictions such as the US where damages for infringement can only be recovered if the product is marked.
When can you mark your product?
A product being sold in a particular jurisdiction can be marked as patent pending as soon as there is a pending patent application in that jurisdiction. In most jurisdictions, it is an offence to mark a product as “patent pending” in the absence of any such pending application.
While a patent is pending (i.e. after a patent application has been filed and prior to grant), infringement proceedings typically cannot be started until the patent grants. However, some jurisdictions do provide for the recovery of damages for any infringement that occurred between publication and grant of a patent, provided the claims at grant are similar to those at publication. Therefore, there are advantages of marking products, even before a patent is granted.
Once a patent is granted, the products should be marked with the relevant patent number.
In what jurisdictions can you mark your product?
The jurisdictions in which you can mark your products depends on what stage the corresponding patent application is in:
PCT applications that are in the international phase:
Products sold in any of the PCT-member states can be marked as “patent pending”. This is the case, even if you have already decided that you will not enter the national phase in certain countries, unless you expressly excluded these countries when filing the PCT application.
PCT applications in the national phase:
Only products in the countries/regions in which you have entered the national phase can be marked. This is because you have essentially abandoned the patent in any other jurisdictions and therefore there are no pending patent applications.
Other complete/provisional applications:
Product(s) can be marked as “patent pending” (or “patent applied for”) in each jurisdiction in which a respective patent application (provisional or complete) has been filed.
How can you mark your products?
This involves physically marking products, packaging and/or marketing materials. In many jurisdictions (e.g., the US), it is considered best to mark the product rather than the packaging, unless the product is too small to allow a legible marking to be applied.
Typically, the appropriate markings will change, such as when a patent is granted or when an application ceases/is abandoned. Updating conventional markings can be costly, e.g., if packaging has to be replaced or moulds have to be remade.
Alternatively, many jurisdictions now allow for ‘virtual marking’. Virtual marking refers to making patent information available via the Internet and marking the product with the corresponding web address. The big advantage being that, as the address links to a live document, the same physical marking may be used for multiple jurisdictions and the information updated without any change to the product.
Whether virtual marking will suffice may depend on the jurisdictions of interest. For example, virtual marking is explicitly recognised in both the US and the UK. In China, it is likely that virtual marking is acceptable, as long as it does not mislead/confuse the public. In Australia, there are no express provisions in favour of virtual marking. The standard for marking is low in that the products need only be marked to “indicate” that the products have been patented. It is likely that virtual marking would be enough to satisfy this requirement.
Examples of acceptable physical markings that a company could use on their products include:
- “Patent http://au.yourcompanyname.com/patents”; or
- “Pat. http://au.yourcompanyname.com/patents”
The relevant IP information for each product must be easily found and identified. In other words, the product and patent numbers protecting each product should be clearly identified. This is particularly important where several types of products are being virtually marked. In addition, good archiving of your virtual marking page is essential so you can readily provide evidence on when product marking information was made available.
Although virtual marking is advantageous for the above-mentioned reasons, the web address can be 30 plus characters. Therefore, in many cases, it is best to mark on the product where possible (with the virtual marking web address) and then on the packaging (provided the product is sold in the packaging) as secondary notification.
- Marking a product as patent pending is something all inventors and product owners should consider as soon as a pending patent application is submitted.
- While marking a product as patent pending does not provide any legal protection, it can alert potential infringers that steps are being taken to protect the invention. This can improve the prospects of recovering damages for infringement – particularly in the US.
- Virtual marking is now accepted in a number of jurisdictions and is a useful option to consider, as opposed to conventional marking.
If you would like any further information on when, where and how to mark your product, please do not hesitate to contact us here at Griffith Hack.