"European Patents Handbook", Volume I, Thomson, Sweet & Maxwell, 2008.
France: Patent Law Art. 51, 1968.
Spain: Patent Law Sec. 64, 1986.
Switzerland:Patents Act Art. 58, 1954.
United Kingdom: Patents Act Sec. 62, 1977
To Mark or Not to Mark…? Patenting in Europe
The question of marking a product protected by patents, especially when such products are marketed in Europe, is one that should be considered with care…
Usually, the product is marked "Patented" or "Patent pending" to inform the public that the product is protected by patent.
Many a manufacturer might think that having a patent granted by the European Patent Office (EPO) and then designated to the elected European countries, or having a patent granted by a European country separately, is sufficient to provide the patentee with the right to claim damages from any infringer of such right, without any markings on the product.
However, the answer, unfortunately, is not that simple.
Firstly, consider that there is still no uniform court or body of law that governs patent litigation in Europe. That means, each European country applies its own national laws to patent markings – and these laws are often different.
Therefore, when instituting a patent infringement case and claiming damages from the infringer, the applicant/patentee will have to approach the courts of each and every European country in which he/she wishes to institute a patent infringement suit. And – in some of these countries the respondent/alleged infringer might be able to rely on a defense: "INNOCENT INFRINGER" if the products were not sufficiently marked.
This article aims to inform patentees of the possibility of such a defense.
Patentees, licensees and all concerned parties should consult their various legal representatives in Europe about MARKING PRODUCTS prior to marketing patented products.
The "Innocent Infringer":
The basis of the defense of "innocent infringer" is that of publicity.
In some countries it is required that the patented product be marked as such so that the user or possible infringer becomes aware of the fact that the product is as such protected by a patent. If the applicant/patentee fails to mark the product, it is possible that NO DAMAGES may be claimed from a person, even though such a person has committed an infringement! In other countries, the onus is on the public to be informed of the patent status – or to contact the manufacturer/seller to enquire about the status…
The position in Europe:
Please note, that according to the national laws of the following countries, patented products should be marked to avoid the defense of "innocent infringer".
Countries
Rules regarding Patent Marking
Denmark & Sweden
Manufacturers and importers have a common obligation to make themselves aware of the circumstances surrounding patented products. Wholesalers and retailers may plead innocence and that they were not informed by the proprietor of the patent. However, if the products were adequately marked, a defense of "innocence" is not possible.
Ireland & United Kingdom
The defense of innocence is offered. However, if the patented goods were marked with the patent number, the defense of innocence will not stand. Merely marking the product with the word "patented" is insufficient!
In the following countries, no defense based on ignorance is available:
Countries
Rules regarding Patent Marking
Belgium
No defense based on ignorance is available – thus no need to mark patents.
Germany
No defense based on ignorance is available – thus no need to mark patents.
Special rules or exceptions to the defense of "innocent infringer":
Countries
Rules regarding Patent Marking
France
The defense of innocent infringer is not nullified by proper marking; thus – even though the product has been marked, the infringer may still succeed with his/her defense.
Italy
The infringer may ONLY rely of the defense of innocent infringer if he/she has searched the Italian patent register and the patent was not then located…
Netherlands
Damages may not be awarded against the infringer unless he/she was informed, or reasonable grounds exists to show that he/she has been informed, that he/she was involved in infringing activities. However, proof that the infringer received a copy of the patent prevents the infringer from relying on the defense.
Spain
Infringers, except for manufacturers, importers, or users of patented processes, are liable only after being notified of the existence of the patent; unless their actions have been intentionally wrong.
Switzerland
No defense based on ignorance of the patent is available, except where the patent has lapsed and has been restored.
Summary:
在歐洲，不同國家對於在產品上標示專利號的政策各異，本文希望能讓你對一些特別的規定加以注意；如果你要在歐洲市場銷售已經獲得專利獲權的產品，可以向相關歐洲國家當地的法律專員查詢。In Europe, the requirements related to patent markings on a product differs vastly amongst different countries. This article attempts to draw your attention to the importance of correct product marking and the necessity of consulting with local legal specialist in the relevant European country where you intend to sell your patented product.
你可以問你的法律顧以下問題：Possible Questions that you might consider when asking for advise from your legal adviser may include:
1. Is Patent Marking required in the relevant country?
2. If it is required, what is the correct way/language that should be used for marking?
3. Is it necessary to mark pending patents – and how is it done?
4. What are the benefits of marking products with the patents that cover them?
5. Is it required to list all the patents on the product or only one/some?
6. The "America Invent Act" provides for virtual marking – what is the position in the relevant country?
Sources:
"European Patents Handbook", Volume I, Thomson, Sweet & Maxwell, 2008.
