We are often asked how to mark products to indicate that they are protected by a patent or a registered design. This is referred to as Patent Marking and Design Marking.
The point of Patent Marking and Design Marking is to communicate to the market that your products are protected by patent or design rights and to deter competitors from copying.
If a competitor does infringe your rights and you have used a form of Patent or Design Marking then it will be difficult for the infringer to credibly argue that they did not know and could not reasonably have been expected to know. This can be relevant in calculating damages which in turn can impact on your leverage to negotiate a favourable settlement.
The traditional way to mark a product or packaging, or both, is with a clear indication of the patent or design rights that exist for the product. Examples include:
“Australian Patent No 2018123456” or an abbreviation such as “AU Pat No 2018123456”
“Australian Design No 201812345” or an abbreviation such as “AU Des No 201812345”
It is important that any Patent or Design Marking be as accurate as possible so as not to mislead or deceive. For example, if all that you have is a Patent Application or a Design Application that hasn’t yet been granted then the marking should indicate this, for example:
“AU Pat App No 2018123456” or “AU Des App No 2018123456”
Marking a product or package may be suitable for consumer goods such as housewares, clothing and the like. Marking the product or packaging may also be used as a marketing tool to indicate to consumers that the product includes superior technology.
In some instances, a product may be subject to a combination of patent and design rights at different stages such as pending patent application rights in some countries, granted patent rights in other countries etc. Also, it may not be convenient to update the product or packaging every time another patent changes from an application to a granted patent, particularly if the product is being sold in many markets with the same packaging.
Another option is to use Virtual Patent Marking or Virtual Design Marking. This is where the patent rights are listed in another location such as a website. Perhaps only the domain name of the website is listed on the product or packaging. An advantage of Virtual Patent Marking is that it can be easily updated as the status of a patent or a design changes or as new patent or design applications are filed.
Virtual Patent Marking or Virtual Design Marking can be suitable where the product is a service and so cannot be physically marked or where for some other reason marking the product or packaging is not desirable or convenient.
It is good practice if using Virtual Patent Marking and Virtual Design Marking to designate a specific and prominent page for this purpose on your website with the words “Intellectual Property”, or something similar, in the title. The page should be updated when any new patent or design applications are filed and when applications transition to granted or registered rights.
For more information about Patent Marking and Design Marking please contact Daniel McKinley