Virtual marking – you’re on notice to try it

In many jurisdictions, damages as a remedy for infringement are not available or are reduced where the infringer proves they were an ‘innocent infringer’.  An ‘innocent infringer’ is not aware of the existence of a registered IP right at the time of the infringement and had no reasonable grounds for supposing that the subject matter of the infringement was protected by a registered IP right.

To avoid access to such a defence, in the case of a product protected by a registered patent and/or a design right, the IP right holder can ensure that third parties are put on constructive notice of the existence of any associated registered IP rights. This is by physically marking the product with the word “patented”, “patent”, “registered design”, etc., together with the relevant serial number, signalling pendency or registration of the associated registered IP right.

In certain countries, for example the UK, it is a criminal offence to falsely mark that a product is protected by a registered IP right when no such right exists. The offence extends to cases where a previous valid registration has been cancelled, lapsed or even expired.  The nature of providing a physical mark on a product means maintenance of the currency of marked products. This is particularly for those with a slow turnover rate or having many parts protected by different rights can be costly and difficult. Additionally, depending on the product’s size, it may be difficult to mark the details of multiple registered IP rights, for example, where several related jurisdictional registered rights exist.

As a result, IP right holders wishing to serve constructive notice on the public are squeezed between bearing the costs of maintaining currency of the marked rights and risking prosecution for false marking offences.

Virtual or web marking in the case of patented products addresses these issues and has become more popular in recent times. For example, virtual marking has been recognised in the US since the commencement of the American Invents Act in March 2013, while the UK Intellectual Property Office (UK IPO) has recognised virtual marking for patents since October 2014.  The convenience associated with the practice is highlighted further by the fact that UK IPO is extending virtual marking to marking of products protected by registered design registrations from 1 October 2017.  UK registered design owners will be able to mark their protected products with a web page address that brings the public to a virtual record of any relevant IP registrations.

Virtual or web marking means a product is marked with a web page address which directs an interested party to a web page dedicated to identification and association of  all patent rights associated product.  The ease with which the relevant particulars on the virtual record can be updated means the currency of information can be readily ensured in a cost effective manner while increasing certainty for third parties as to the status of the associated registered rights.

Other advantages exist for holders of registered IP rights obtained through regional or international IP registration systems. For example, while the European Patent Convention leaves the notion of marking to national law, virtual marking negates any false marking risk associated with selling marked products in European contracting states where a European patent has not been validated, has been revoked or has been allowed to lapse as the precise jurisdictions where the European patent is validated and maintained in force can readily be updated.

While the Australian Patents Act 1990 (Cth) does not explicitly provide for virtual marking, there is nothing in the Act that appears to preclude virtual marking meaning Australian registered IP right holders should consider the advantages of implementing a virtual marking system for their business as a convenient way of serving constructive notice on the public.

Mary Munroe, Principal

Dr Mary Munroe, Former POF Attorney

BSc(Hons), PhD, GDipIP

Mary is an Irish, UK and European qualified patent attorney with over a decade’s experience in IP. She is also a qualified Irish and Community trademark and design attorney (EU), and an Australian and New Zealand patent attorney.