Recent developments in the US concerning patent markings may have a significant effect on companies that are producing products which may be protected by way of a US patent.
The question here is: Are the patents still valid? If the patent in question has expired, do you still indicate the patent number on the packaging of the product? What if the mould that is used to produce the product still has the expired patent number on it?
Patent marking refers to an indication of the granted patent number on the product packaging. The main purpose of patent marking is to provide a notice to potential infringers that the product in question is protected by way of a patent or a pending patent application.
It is not compulsory to mark your products in the US with a patent number. However, it is strongly recommended as the US patent law provides that in the event that the patented product is not marked with an appropriate patent marking, then the patentee can only claim damages for the period after the defendant is officially notified, which in most cases is after the patent infringement is filed.
This practice seemed to be the norm until recently when a certain Mr. Raymond E. Stauffer sued Brooks Brothers Inc. (“Brooks”) in the US Federal Court, claiming Brooks broke the US patent law by marking its adjustable bow ties with patents that expired in the 1950s. The US Federal Appellate Court ruled last month that Mr. Stauffer was entitled to sue Brooks on the matter.
Previously, defendants who were found to be misleading the public by marking their products with expired patent numbers were charged a maximum fine of USD500. However, a case filed in December 2009 in the Court of Appeals in Washington DC ruled that defendants could be held responsible for up to USD500 for each product marked with expired patent numbers. If this is set to be a precedent, that the liability of patent owners could be massive.
These two cases could pave the way for hundreds of similar suits against patent owners in a move that will expose patent owners in the US to huge liabilities in the event that their products are found to be marked with erroneous or expired patent numbers.
Based on our experience in handling US patent matters, we are of the view that the plaintiff (the person who is suing the patent owner for marking his product with erroneous or expired patent numbers) must prove that the patent owner is “intentionally” trying to mislead the public.
The US patent law does not provide a clear definition of a grace period for patent owners to change the patent markings on products which are no longer within their control, such as when the product has been sold and is on display in the mall or supermarket. If a patent had recently expired, then the owner of the patent would be excused provided he has a proper audit program set up to regularly review his patent markings and rectify any inaccuracies. The key is that the patent owner must take all the necessary actions to correct this as soon as the patent expires.
Therefore, we would advise our clients who have obtained patents in the US to take reasonable steps to keep their products marked appropriately. Audits on the patent marking practices should be conducted on a regular basis.
If you have any further enquiries on this issue, please feel free to e-mail us atipr@www.kass.com.my.
- Spotting Seiko in Seiki? - May 17, 2016
- The Non-Use of PARLIAMENT in Malaysia - April 25, 2016
- [Business Today] The Recipe to Success… - October 20, 2015
