The Vexatious Dilemma
Did you know that it is against the law in the UK to say a product is patented when no patent protection exists? Also, you can find yourself in hot water if you continue to represent a product as patented once the patent protection has ended. On the other hand, if a product is patented and you don’t mark it so, then you risk being unable to recover damages for infringement and place yourself at a disadvantage.
Innocent infringers, those infringers who can prove that they were unaware and could not reasonably have been aware of a patent, do not have to pay damages for infringement carried out while they were unaware of the patent. Marking a product as patented puts infringers on notice and makes it very difficult for infringers to argue innocent infringement. However, it is not as simple as just marking a product as “patented” or words to that effect: the UK statute explicitly says that the patent number must also accompany the word “patented”.
The problem is that it is not always easy to change the markings on a product once it is made. It is also not always easy to change the tooling on machinery set up to mark products. There must be a better way of doing it.
The Logical Solution
Under the America Invents Act, the USA expressly allows virtual patent marking. Manufacturers can mark a product with a notice directing users to a website identifying any patents covering the product. This counts as putting infringers on notice, and is a good thing because it is normally much simpler to keep a website up-to-date with the changing status of patents than the product itself.
We might be getting our own similar provision soon. The UK Intellectual Property Office has recently held a consultation asking whether the law should be changed to expressly allow virtual patent marking in the UK. It is difficult to imagine much opposition to it, and it seems likely that the provision will come into force within the next few years.
So Why Wait?
While we could all wait until an appropriate provision explicitly allowing virtual patent marking comes into force in the UK, there are strong reasons to start virtual patent marking before then:
- If you keep your website up-to-date, the risk of false marking is minimal.
- If an accurate list of patent numbers is only a click away, then the patent numbers arguably ‘accompany’ the indication that the product is patented. Virtual patent marking could therefore be said to give constructive notice to infringers, potentially avoiding the problem of innocent infringement.
- Virtual patent marking does not mean that you cannot also write a letter putting an infringer on notice (being careful not to fall foul of the UK’s provisions for making threats of litigation). This might seem unusual to those more familiar with US practice, where forum shopping means you might not want to hand the initiative over to the infringer in case they file for revocation in their preferred court. However, forum shopping is not an issue in the UK, at least until the European Unitary Patent comes into force.
- Even if virtual patent marking is not found sufficient to provide constructive notice, it can still be difficult for the infringer to prove innocent infringement. Generally, courts have found that any company involved in research and development or having employees engaged in patent work should be aware of patents in their field. This means if a company has deep enough pockets to be worth pursuing for damages, there is a good chance that they will not be able to hide behind the defence of innocent infringement.
- Damages are not the only remedy. An injunction preventing future infringement is always an option.
On The Other Hand
Whether or not virtual patent marking of UK patents is appropriate for you will of course depend on your particular circumstances, such as the nature of your business and the businesses of your competitors. Contact your Reddie & Grose LLP attorney for advice about patent marking, be it virtual or otherwise, or any of the other issues mentioned in this post, including the America Invents Act, the European Unitary Patent, and the risks of issuing groundless threats.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.