In many jurisdictions there are advantages to marking patented products to indicate that they are, in fact, patented. However, the benefits of marking – or the disadvantages of not doing so – can very greatly from country-to-country. In the United States, for example, the marking statute (35 USC § 287) provides that in the absence of marking, the patentee bears the burden of proving the date upon which an infringer was made aware of the existence of a patent in order to recover any damages for past infringement.The provisions in the Australian patent law relating to marking are, fortunately, less onerous. Indeed, in Australia the patentee has an advantage, in the case that products are not marked as being patented, and it is the infringer that must satisfy the court that it lacked relevant awareness of the existence of a patent.
Even so, there are clear benefits in marking products as patented in Australia.
However, marking can create problems of its own. For example, if a product is patented in multiple countries, and/or is protected by multiple patents, is it practical to mark it with the relevant details of every one of those patents? What are the rules for marking products while an application is pending, i.e. before a patent is actually granted? Are there penalties where products continue to be marked after the patent has expired? These may not be trivial matters, because changing the marking on products themselves – or even only upon the packaging – may involve substantial costs and administrative overheads.
And what about patented methods, e.g. services or manufacturing processes – should these be ‘marked’ in some way?
A solution to many of these problems is so-called ‘virtual marking’, which refers to making patent information available via the Internet and marking the product with the corresponding address. Such information can, of course, easily be updated without requiring any changes to products, packaging, or other materials. Express provision was made for virtual marking in the US in the America Invents Act of 2011 (legislation better known for converting the United States from a ‘first-to-invent’ priority system to ‘first-inventor-to-file’). By way of example, TiVo maintains its patent information at www.tivo.com/legal/patents, and marks its products accordingly.
But what about Australia? Is virtual marking an effective and useful option here? I think so, and I will explain why.
Tags: Australia, Infringement, Marking
One of the most common questions asked by any applicant or inventor after a new provisional application has been filed is: ‘can I now say “patent pending” about my product/service?’
