If you have you have just been granted a patent for an invention, what should you do next?
You would have applied for a patent in order to protect your invention, presumably as a tool to prevent others from infringing a patent granted on your application, or as a tool to license, cross-license or negotiate with others, with a view to monetising your patent.
Once your patent is granted, you should make others aware of the existence of your patent. Your patent attorney might have advised you to mark your product with the words, “South African Patent No. X”. But what does that mean? How does it affect your ability to monetise your patent? Are you required to do so, and if not, should you do so?
The South African Patents Act provides that a patentee is not entitled to recover compensation in respect of patent infringement from a defendant who proves that at the date of the infringement he was not aware, and had no reasonable means of making himself aware, of the existence of the patent. The marking of an article with the word “patent” or “patented” shall not be deemed to constitute notice of the existence of the patent “unless such word… is accompanied by the number of the patent”.
A potential infringer may be made aware of the existence of the patent by a means other than patent marking, for the purpose of recovering compensation, for example by a letter notifying him thereof, but patent marking is a simpler and recommended notice of the existence of the patent.
The South African courts have not interpreted the above provision of the Patents Act. But the purpose of this provision is that the law requires, in order to recover compensation, a notification of the existence of the patent by identifying the number of the patent, such that an infringer may have a reasonable means for making himself aware of the existence of the specific patent. The implication is that the marking of a product with the word “patent” or “patented” unaccompanied by the number of the patent would not be a reasonable means for an infringer to make himself aware of the existence of the patent, and the marking of an article with the word “patent” or “patented” along with the patent number shall be deemed to constitute notice, in order to recover compensation.
Two questions may spring to mind when considering how to mark a product in light of the purpose of the above provision: must the actual product or article itself be marked or can the packaging be marked; and is it possible “virtually” to mark a product by using wording which points to a webpage where the patent numbers are listed?
Patent marking on the packaging may be interpreted to fall within the meaning of the provision, as it provides a notification such that an infringer may have a reasonable means of making himself aware of the existence of the patent. Packaging for a packaged article remains together with that article until separated from that article. It might be quite difficult successfully to argue that one only considered the physical article itself and not its packaging when determining whether the article might have patent protection, as doing so may be unreasonable.
Similarly, the inclusion of a web link on the product or packaging next to the word “patent” or “patented”, which includes the specific number(s) of the relevant patent(s), may be interpreted to fall within the meaning of the provision above, as the word “patent” is ‘accompanied’ by the number via the link, and would further constitute notice of the existence of the patent(s) for the purpose of the Patents Act i.e. it provides a “reasonable means”. It would be sensible only to provide the specific patent number(s) relating to the relevant product, or at least clearly to identify the relevant patent(s).
The United Kingdom Intellectual Property Office (UK IPO) issued guidance in 2014 on virtual marking of patented products, stating that virtual marking was a valid form of patent marking “provided that the webpage clearly associates the patent number with that product.” The guidelines include that the information provided via the webpage must be clear and accessible, “making it easy for the public to ascertain which patents apply to the product.” The guidelines also state that it is unlikely to be sufficient to provide the web address of the home page of a company website, unless there is a clear association between the product and the relevant patent number on that home page.
The risk exists that, should the courts be faced with this issue in the future, they may give a contrary interpretation that requires the physical presence of the number alongside the word “patent” or “patented” on the article, and that the inclusion of a web link referring a person to the number of the patent is not a reasonable means for providing notice of the existence of the patent. This interpretation is probably unlikely given the times we live in and the approach of the UK IPO, but it is nevertheless worthwhile keeping in mind.
The law does not require you to mark your patented product or article, and there are no penalties for not doing so. But, should your patent be infringed you may not be able to recover compensation arising from the infringement if you did not provide reasonable means for the defendant to make himself aware of the existence of the patent.
Finally, it is important to be aware that the South African Patents Act provides that it is an offence falsely to represent that any article is a patented article, and any person doing so is on conviction liable to a fine not exceeding R 1,000 or to imprisonment for a period not exceeding 12 months, or to both a fine and imprisonment. Therefore, products (or packaging) should only be marked where there is a granted and in-force patent relating to that product.
Written by Patrick o’Brien (Associate, Spoor & Fisher) and Hugh Moubray (Partner, Spoor & Fisher)