Marking patented products: practical guidelines for Canadian companies
November 19, 2008

Everyone has seen products that are marked with “Patent pending”, “Pat” or “Patent”, usually followed by a multi-digit number. Most people are aware that these types of markings indicate that the product is covered by a patent (or patent application). What most people may not realize is that in certain cases, these little markings can have significant legal implications when it comes to calculating monetary damages if a patent is ever infringed.

Some companies use patent markings for commercial reasons: to convey to the public an image that their product is innovative, technically superior and different from competing products on the market. Patent markings are also used to warn competitors that products cannot be copied without risking legal consequences. However, beyond such commercial reasons, patent markings can also play an important role when it comes to realizing the full benefits of patent protection.

Companies in possession of patent rights should be aware of the dos and don’ts of patent markings, as well as the legal implications associated with marking their products. Given that these implications are significantly different under Canadian and U.S. patent laws, it is important for Canadian businesses that sell products in the U.S. to understand the benefits of marking patented products under U.S. law.

Legal marking requirements. In Canada, the Patent Act does not include any provisions about marking patented products and the Supreme Court has confirmed that notifying the public of patent rights by marking patented products should not be used by a court to calculate monetary infringement damages.

In contrast, U.S. patent law includes specific provisions regulating patent markings.  U.S. courts have also in several instances addressed what constitutes a proper marking and the effect of marking when calculating infringement damages.

Notably, in the U.S., recoverable damages resulting from infringement do not automatically start to accrue on the date the infringement begins. Instead, damages are calculated beginning on the date that the infringer received either “constructive” or “actual” notice of the alleged infringement.

An “actual” notice means directly notifying the infringer of the infringement, most commonly by way of either a letter or service of an infringement complaint. To be effective, this actual notice should (1) inform the recipient of the identity of the patent(s), (2) inform the recipient of the activity that is believed to infringe the patent(s), and (3) propose to abate the infringement by license or otherwise. Merely advising a third party of the existence of a patent has generally not been considered by the courts to be sufficient to satisfy the requirements for actual notice.

A “constructive” notice means complying with the marking requirements set out in subsection 35 U.S.C. 287(a) of U.S. patent law.

General guidelines, examples and comments for marking patented products to satisfy U.S. marking requirements are provided below. For specific situations, seeking the advice of qualified U.S. counsel is recommended to ensure that U.S. marking requirements are met.

What is considered sufficient marking? As commercial products in different industries differ in format, packaging and content, several options are available for properly marking patented products.

To be considered sufficient under U.S. law for the purposes of constructive notice, the word “Patent” or the abbreviation “Pat.” together with the number of the patent must be indicated. The marking requirement is not satisfied by simply marking the product with the words “Patent Pending” or words of similar effect. The marking should also be large enough to be legible.

When a product is covered by multiple patents, the multiple patent numbers may be listed along with a statement that the product is covered by “one or more” of the patents.

As to the location of the marking, U.S. law requires that the notice be “fixed” on the patented article itself. However, when the character of the article does not allow this to be done, for instance, as in the case of a protein solution, a carbon nanotube, or a microchip, the marking may be included on a label affixed to the article or to the packaging containing one or more units of the article. Also, in circumstances in which the character of the article does not allow the notice to be “fixed” on the patented article itself, it may be possible to include the marking on product literature associated with the patented article. In such cases, care should be taken that the product literature is provided together with the patented article, rather than being solely distributed independently from it.

Finally, once marking has begun, it should be substantially consistent and continuous. Omission from any substantial number of articles may constitute non-compliance and may result in a shorter eligibility period for the assessment of monetary damages resulting from infringement.

Who is responsible for marking? The responsibility for marking patented products rests on the patent owner. In cases where the patented product is manufactured by a licensee, the patent owner remains responsible for taking reasonable steps for ensuring that the licensee properly marks the patented product. Failure by a licensee to properly mark a patented product under license may limit a patent owner’s recoverable monetary damages.

What types of claims require marking? Current U.S. case law suggests that marking should only be required when a commercial product is covered by a product (apparatus/system) claim. In cases where there are only method and/or process claims in a patent, the courts have generally indicated that there is no marking requirement.

When a product is made by a combination of elements and is covered by patent claims defining the combination – but where the individual elements themselves are not patented (e.g., a patent including claims directed to a tire repair kit having a combination of elements where the individual elements are not covered by the claims) – at least one visible element should be marked as being “for use under” the patent directed to the combination.

False marking. Marking a product to indicate that it is covered by a patent is often used to convey a message of technological superiority and to put would-be competitors on notice that a patent covers the product. As a result, it may be tempting to use some form of patent marking on a product simply as a part of a marketing message without actually having the underlying patent rights associated with that product.

It is worth noting that intentional false markings can have legal and financial consequences. Specifically, U.S. law prohibits three types of false marking:

  1. counterfeit marking (i.e., the use of a patent mark without the patent owner’s permission);
  2. false patent marking (i.e., the use of a patent mark on an unpatented product with intent to deceive the public); and
  3. false patent pending marking (i.e., use of the terms ”patent applied for” or ”patent pending” when no patent application directed to the product was filed).

A finding of mismarking carries consequences including monetary penalties.

Consider marking at an early stage. While marking patented products in Canada is not necessary, there are no significant drawbacks to doing so from the perspective of the computation of eligible monetary damages. Conversely, in the U.S., properly marking patented products at an early stage can have a significant positive impact on the calculation of damages, since such calculation takes into account damages accrued after an infringer received either “constructive” or “actual” notice of the alleged infringement.

Canadian companies having one or more U.S. patents and that sell products covered by these patents in the U.S. should therefore consider marking their products in compliance with U.S. law as early as possible. Doing so will maximize the period of eligibility used in the calculation of recoverable infringement damages resulting from a third party’s infringement of the patent(s).

Brigide Mattar and George Elvira, Montreal

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