By Kshitij Malhotra, Partner and Garima Rai, Senior Associate
With the fast paced growth in technologies in today’s world, patents are considered as essential for corporations as well as individual inventors or applicants. It is known that the general purpose of a patent is to provide exclusive right to the patent owner for manufacturing and selling a patented product. Going by the definition, patent marking relates to making the general public aware of the fact that a product has been patented or a patent has been applied for the product.
When a person applies for a patent or has been granted a patent, it becomes very important to protect its rights on a product, as well as the rights of the competitor to know that a patent exists on that product by making the public aware that a patent has been granted on it.
Provisions of Indian Patents Act, 1970
According to Indian Patents Act[i], a person who has been granted a patent may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.
If a patent is yet to be granted, the patentee may use words such as “patent pending” or “patent applied for”.
Patent marking not only creates awareness about the patented product to the general public but also constructively informs the infringer who has a similar product and is involved in the act of infringing on patentee’s product.
According to Section 111[ii] of the Indian Patents Act, in the event of failure to mark, the patentee cannot claim for any damages in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. In other words, marking a product being covered by a patent is essential when it comes to obtaining compensation from potential infringers.
However, there are chances of innocent infringement when the infringer is not aware of the patent. In such cases, patent marking plays a major role. If a patent is marked along with the patent number or with the patent application number quoting “patent applied for”, then there arises very less chance for infringement.
Summarizing the purpose of Patent Marking as below:
1. Helping to avoid innocent infringement;
2. Encouraging patentees to give notice to the public that the article is patented; and
3. Aiding the public to identify whether an article is patented.
Types of Patent Marking
To satisfy the marking requirements, a patented article must be marked either with the word “patent” or the abbreviation “pat.,” together with the applicable patent number. Where an article is already on the market and a patent covering it is issued later, the patentee is required to update the mark to identify the patent number of each newly issued patent. There are basically two types of patent marking as explained below:
Physical marking relates to physical printing of the patent application number or the patent number along with “patent applied for” or “patent” on the product. Such an example is provided in Fig. 1. There exists wide range of products which contain such marking of the patent number such as medicines, ointments, hair cleansers, mechanical devices etc.
There are situations when a patent is yet to be obtained for a patent application which has already been marked and product is sold in the market. Once, a patent is granted for such product, the patentee is required to amend the marking on its products by replacing the patent application number with the patent number.
However, it will be appreciated that updating physical marks in such situations can result in additional manufacturing costs, due to retooling of manufacturing processes or development of new product moulds to include new patent numbers on the products or to delete inapplicable ones. The magnitude of the additional costs is difficult to ascertain reliably given the lack of empirical data regarding the impacts of physical marking on manufacturing processes, but several public commenters noted that it is costly to make changes to a product.
In this era of versatile internet and easy access to information across the globe, if the patent information is put on respective websites, the public would certainly get the knowledge for existence of such patent. This introduced the concept of Virtual Marking. Virtual marking allows patent owners to effectively mark their products with a single “virtual patent marking” comprised of the word “Patent” (or “Pat.”) together with a URL address accessible to the public that associates the patented article with the number of the patent. This benefits companies by not having to update molds every time they are granted a patent for a product. An example of such virtual marking is provided in the adjacent Fig. 2.2
Although, virtual marking holds high importance when compared to physical marking, Indian provisions are directed to stamping, engraving or impressing of
patent application no. or the patent number on the product. The teachings of the Indian Patent Law are reticent on virtual marking. However, it is believed that with growing number of patent applications being filed at the Indian Patent Office and the growing number of patents being granted, the concept of virtual marking should be instigated as an alternative way to patent marking.
False Patent Marking
A patentee can mark his patented product with the patent number; however, there is a word of caution. There could be cases when a person who is not a patentee or does not own a patent, puts up a false patent number information marked on his product with the intention of earning benefits from such marking.
The Indian Patents Act[iii] puts a restriction to a person to false mark a product with a patent number when the product has actually not been patented. According to Section 120, if a person represents on his product that it has been “patented” in India or a “patent has been applied for”, the person is considered to be punishable with a fine of up to INR 100,000/- (~1500USD).
It is evident that the Patent Marking law has not mandated any duty on the patentee. However, if patentees diligently follow the law, patent marking can prove to be a good marketing and a quality source tool. It also satisfies the authenticity and genuineness of the product. India is growing in the field of innovation and technology and it is believed that strict implementation of such laws will certainly reduce infringement, thereby benefitting the common public.
[i] Explanation 2 in Section 120 as provided below
[ii] Section 111, The Patents Act 1970:
Restriction on power of court to grant damages or account of profits for infringement. —
(1) In a suit for infringement of patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.
Explanation. -A person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word “patent”, “patented” or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question.
[iii] Section 120, The Patents Act 1970:
Unauthorised claim of patent rights. -If any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with fine which may extend to [one lakh rupees].
Explanation 1.-For the purposes of this section, a person shall be deemed to represent-
(a) that an article is patented in India if there is stamped, engraved or impressed on, or otherwise applied to, the article the word “patent” or “patented” or some other word expressing or implying that a patent for the article has been obtained in India;
(b) that an article is the subject of an application for a patent in India, if there are stamped, engraved or impressed on, or otherwise applied to, the article the words “patent applied for”, “patent pending”, or some other words implying that an application for a patent for the article has been made in India.
Explanation 2.-The use of words “patent”, “patented”, “patent applied for”, “patent pending” or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in India, or to a pending application for a patent in India, as the case may be, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside India.