18 March 2019

How do we navigate through the Patent Marking jungle?

Many entrepreneurs consider it an added value to indicate that they have applied for or were granted a patent on their product. In practice, ‘patent marking’ indicates the granting of a patent. Patent marking is not only a warning to plagiarists (or potential ones), it is also a good marketing tool for the entrepreneur in order to indicate that this concerns an innovative product. But precisely how is patent marking done and does it differ per country?

This article will give you a bird’s eye view of the most important points for attention when navigating through the patent marking jungle. We will provide answers to the following questions:

  • Is patent marking necessary (for the purpose of indemnities)?
  • How should marking be carried out?
  • What happens if the patent marking is erroneous or incorrect?

The answers focus on the countries most selected for a patent: China, Germany, France, the Netherlands, the United Kingdom and the United States.

The necessity for patent marking
In most of the aforementioned countries, it is not necessary to refer to patent marking in order to claim damage compensation from an infringer. In the Netherlands however, it does apply that during the period in which the patent has not been granted yet (the ‘patent pending’ status) the infringer must be warned in writing in order for the claimant to demand damage compensation. Prior to granting, the Dutch patent application is still confidential. The Dutch patent law states that damage compensation can only be claimed if the infringer knew or could have known in all reasonableness that his/her actions constituted an infringement. By pointing out to the alleged infringer the existence of a patent application, damage compensation can be demanded.

In the United Kingdom, the patent marking is definitely important. If a product is not marked with a patent marking and the infringer did not know (or could not have known) at the moment of infringement that there was a patent, no claims for damage compensation over the earlier period can be made by the patent holder.

The United States is the only aforementioned country in which a marking is in principle mandatory on the product in order to claim damage compensation from the other party based on infringement.

The only exception is if a patent holder notifies an infringer of his patent and the infringer later continued to engage in infringement. In that case, the infringer cannot appeal to the absence of the marking.

Implementing the marking
In most countries, the applicable regulation says that a patent marking in any case must include the patent number, or in case of patent application, the application number.

The regulation in China stipulates that the marking must also contain the type of patent (patent or use model) in addition to the Chinese patent number or application number. In the case of a patent application, one must also include the notification ‘patent application, not yet granted’. The marking is preferably in Chinese, but can also appear in English.

In Germany, the applicable regulation is that the term ‘Deutsches Bundespatent’ (German for federal patent) or for short D.B.P. must appear on the product. When a patent application is published, the D.B.P. must be supplemented with the term ‘angemeldet’ or ‘angem.’ (German for requested). The patent number is not mandatory, but upon request, must be provided to the requesting individual or institute.

In France, the applicable regulation says that the term ‘Brevet’ in combination with the patent number must be shown, therefore ‘Brevet No ……’.

In the Netherlands, alongside the patent number or patent application number, it must be indicated as well whether it is a Dutch patent or a European patent application that was validated in the Netherlands. In the first case, the formulation becomes ‘Patent number NL[number]’; in the second case it becomes ‘Patent number EP/NL[number]’.. The Dutch term ‘octrooi’ may also be replaced by the term ‘patent’. Furthermore, in case of a patent application, the term ‘pending’ must be included to indicate that the patent has not been granted yet.

In the United Kingdom, next to the patent number, the term 'Patent' or ‘Patented’ must appear in case of a patent and in case of a patent application: the term ‘Patent Pending’ or ‘Patent applied for’.

In the United States, the term ‘Patent’ or ‘Pat.’ must be included for patents and ‘Patent Pending’ or ‘Pat. pending’ for patent applications in addition to the patent number.

Erroneous or incorrect marking
The regulation in all the countries stipulates that applying a patent marking is not permissible if it is not based on a patent or patent application. In France, the UK, the Netherlands, China and the USA, a fine is imposed if unlawful use is established.

In Germany, unlawful use is a violation of the German competition law, which can be invoked by a third party. Consequently, this third party can claim damage compensation.

Marking products with a patent number or patent application has various advantages for the patent holder. However, it is very important not to place any erroneous information on the product or worse, incorrect information. This could result in fines, and in Germany also in damage claims.

An increasingly popular method of marking (and widely permitted) is virtual marking. In this case, the term ‘patent’ or ‘patented’ is combined with an Internet link to a company page that shows the prevailing patents or patent applications per product.

This virtual marking is already permitted in the United Kingdom, the United States and China and in some cases, is possible as well in the Netherlands, France and Germany. The advantage of a virtual marking is that adjusting the status on an Internet page is realised faster and is also much cheaper than, for example, implementing an adjustment in an injection mould.