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Article · 11.11.2020

Strengthen your patent with virtual patent marking

Virtual patent marking is a cost-efficient and flexible way to take further steps to protect your right to damages in the event of patent infringement, thereby strengthening the value of your patent.

Authored by Attorney-at-law Simon Gjern Pedersen.

What is virtual patent marking?

Virtual patent marking is a more flexible alternative to physical marking of a patent right or product, using designations such as ‘Patented’ or ‘Patent pending’ in order to make potential patent infringers aware of the protected nature of the product and thereby place them in a position of bad faith.

With virtual patent marking, a patentee simply marks the product with a URL (website address) that links to a virtual list of IP rights associated with the product – and potentially other products – as well as other relevant information, such as rights status, priority date, etc.

This way, you can easily update the rights status in the list of IP rights on the website instead of having to print a new physical mark on the product. For instance, you do not need to change the designation ‘Patent pending’ on a product to ‘Patented’ when the application is finally registered.

If both patent and design rights are associated with the product, it may be an advantage to list the design right as well.

Why is patent marking important?

Patent marking serves two main objectives:

  1. to deter others from copying the patented invention, technology or method; and
  2. to place the patent infringer in a position of bad faith and thus improve your own chances of being awarded damages for any infringement.

Particularly the second objective is relevant, because you may be completely cut off from claiming damages for patent infringement if you are unable to prove that the patent infringer acted in bad faith as to the protected nature of the product. This also applies in Denmark, where obtaining reasonable remuneration, damages and compensation for patent infringements requires that the patent infringer “intentionally or negligently commits patent infringement” [section 58 of the Danish Patents Act].

When you mark a product with, for example, ‘Patent pending: U.S. Pat. 1,234,567’, it is difficult for an infringer to argue unawareness of the protected nature of the product, thereby rendering the infringer liable to pay damages.

Thus, virtual patent marking enables patentees to strengthen the protection of their patent rights against unauthorised patent infringements in a flexible and efficient way.

How is virtual patent marking used in practice?

As matters stand, very few countries have officially set up guidelines for using virtual patent marking. Among these, the USA and the UK are the most relevant ones seen from a Danish perspective, as the EU and most of the individual countries in Europe have yet to adopt a standard for virtual patent marking.

According to US and UK statutes, virtual patent marking placing the patent infringer in a position of bad faith will be deemed to be valid only if the following conditions are met:

  • The product – or in some cases the packaging – must be marked either ‘Patent’ or ‘Pat.’ followed by a website address (URL) that links to a list of associated IP rights.
  • The contents of the linked website must be accessible to the general public free of charge and without any other hindrances.
  • Patent numbers must be stated clearly and correctly.
  • The individual products must be clearly identified and associated with their respective patent numbers in the list of IP rights on the website, specifically stating the product name and product code.

In addition to the above mandatory conditions, it is also recommended to include a short text in the introduction to the list of IP rights in which you mention the concept of virtual patent marking and the objectives thereof. It may also be a good idea to add the status for each right by writing ‘Pending’ or ‘Expired’.

Although clear guidelines for using virtual patent marking in the EU and Denmark have yet to be introduced, there is every reason to presume that the criteria will be essentially similar to those applying in the USA and the UK.

Patrade provides advice on both the legal and practical aspects of virtual patent marking, and we naturally monitor closely the developments in the use of virtual patent marking.

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