"Patent Pending," "Patent No.," or "Registered Design No." seen printed on a product is often a person’s first and perhaps only exposure to patents and registered designs. These markings highlight a product's innovation or creativity and provide a deterrent to its copying. However, marking also carries further legal implications. Join us in this first instalment of our two-part series as we unpack the foundational aspects of patent and registered design marking, and their legal context in Australia, New Zealand and other select countries.
Patent or registered design marking involves providing some form of indication on or near a product of the existence of a related patent and/or registered design. Traditionally, text is applied directly to the product, or else to packaging or materials related to the product, including phrases such as:
Since patent and registered design rights can be used to stop others from copying or competing with similar products, marking a product with details of corresponding IP rights can provide a significant deterrent to competitors. Notably, and if found guilty, infringers may be subject to substantial financial penalties (damages or profits derived), unless they can demonstrate ignorance of the existence of the patent or registered design right. Such a defence is weakened if the copied product is clearly marked as being protected by the relevant patent or registered design right.
Care must be taken when applying such marking, however, as a misleading marking may result in penalties for false representation. For example, the marking should not imply that a product is “patented” when any patent rights have expired or only a pending patent application exists. In the latter case, marking should clearly include the status of protection using words such as “pending” and/or “application” along with the relevant application number, for example.
In a previous article, we discussed Australia’s “ignorance” defence for infringers. The defence becomes harder if a rights holder provides constructive notice to the public of the existence of a patent and/or registered design right through suitable use of patent and registered design marking. This is largely because Australian patent and designs laws recognise that it is the infringer’s responsibility to prove that they were not aware of the relevant patent or registered design at the time of their infringement.
In the context of registered designs, if found guilty, an infringer may avoid paying penalties if they can prove that they had taken all necessary steps to find out whether a design was registered for the copied product, but did not discover the applicable registered design. If the copied product was properly marked to indicate registration of the design, this establishes a first impression that the infringer was indeed given constructive notice, i.e., would have been aware of the registered design.
Similarly, in the context of patents, an infringer, if found guilty, may avoid paying penalties if they were not aware and had no reason to believe that the patent existed. Again, if the copied product is properly marked, this establishes a first impression that the infringer was given constructive notice, i.e., would have been aware of the patent.
An interesting difference in patent and registered design marking legislation in Australia provides an example of the legal complexities at play. Australian patent law suggests a threshold for “awareness” for patent infringers which is not included in its designs law: a product with a patent marking must be “sold or used” in Australia “to a substantial extent” (emphasis added) in order for the infringer to be considered aware of the patent.
Unfortunately, the courts have not explored what exactly is required to meet this threshold. This notionally leaves a grey area where a patented product could be properly marked but not widely sold or used in Australia, potentially allowing an infringer to still rely on the “ignorance” defence.
New Zealand also recognises that financial penalties may be avoided by an infringer of a patent or registered design if they can provide that they did not know, and ought not reasonably to have known, that the patent or registered design existed.
New Zealand patent law presumes that a person “ought reasonably to have known that a patent existed” if (1) a product is marked so as to indicate it is patented in New Zealand and with the New Zealand patent number and (2) the person knew, or ought reasonably to have known, of the product (emphasis added).
New Zealand designs law provides that a person will not be considered to have been aware of the existence of a registered design if a product is only marked with the word “registered” (or any words or abbreviations indicating the existence of a registered design) without (1) the words “New Zealand” or the letters “NZ” and (2) the number of the registered design.
New Zealand patent and designs law further require the product to be marked with the patent number or registered design number.
Clearly, a New Zealand patent or registered design owner therefore has the best chance of forcing an infringer to pay penalties if the words “New Zealand Patent No.” or “New Zealand Registered Design No.” followed by the patent or registered design number is physically applied to a product sold or used in New Zealand.
The likelihood of an infringer incurring a financial penalty for infringing a UK patent or registered design is increased if (1) the words “patented” or “registered design”, (2) the GB country code and (3) the patent or registration registered number are physically applied to the copied product sold or used in the UK and/or Northern Ireland.
With the coming into effect of new legislation in 2011, marking in the US requires careful consideration as a failure to properly mark a product can preclude an owner of a patent or registered design (referred to as a design patent in the US) from recovering any financial relief from an infringer, at least not until constructive notice is given.
Similar to the UK, proper marking in the US requires physically marking the product with (1) the word “Patent” or its abbreviation “Pat.”, (2) the applicable US country code and (3) the patent number. The packing or labelling associated with the product can only be marked if the product is not suitable for marking.
"Virtual marking” has recently been formally recognised in the UK and the US as an alternative to physical marking. See our next instalment of this two-article series for more information on virtual marking.
In the concluding instalment of this two-part series, we will delve deeper into the emerging practice of "virtual marking," examining its nuances and implications.