Virtual Patent Marketing

INTRODUCTION

With as many as 47854 patents filed and 13035 granted in the single financial year of 2017-2018[1], it is obvious that keeping track of patents is no cake walk. This is when statutes that require the inventor/manufacturer to mark their products with the patent number come to save the day. Hence, Patent marking has assumed popularity as a means of providing a constructive notice to the people, conveying that a patent has been applied for and granted to a certain product.

Marking a product usually means inscribing or labelling it with the words “patent” or “patented” accompanying the patent number that has been allotted by the patent office. In India, S. 111 of the Patents Act, 1970 requires a product to be marked with the intention of existing as a constructive notice onto a potential infringer of the product. Although the law doesn’t mandate marking a patented product with patent marking, it gives the defendant a very viable ground of defence while defending a suit of infringement in case such a marking fails to exist.

Patent marking, along with all its benefits, is also plagued with several disabilities which make it an unattractive choice for the inventor for use as the preferred method for apprising the people about the patent. Major concerns associated with patent marking is the cost involved in making new moulds, changing the product material, packaging, inventory, etc. when an old patent expires and a new patent is issued.

VIRTUAL PATENT MARKING

Due to its many disabilities, traditional patent marking is being substituted with virtual patent marking, which has proved effective and efficient in many jurisdictions internationally. Under the virtual patent marking system, an internet link is used to convey the various patents subsisting in a product along with the status of the patent. Hence, instead of looking up a single number or an array of numbers in the patent registry, the consumer may simply redirect to a website to find out information about all the patents, old and new.

VIRTUAL PATENT MARKING IN INDIA

The explanation to section 111(1) of the Indian Patents Act, 1970 reads as follows:

Explanation. -A person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word “patent”, “patented” or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question. On reading the explanation, it becomes obvious that the provisions requires that an infringer be given a constructive notice of the patent, through the words “patent” or “patented” accompanied by the patent number, mandatorily. In this case, a web address accompanying the above words may not satisfy the requirement and the presence of the patent number on the said article is a prerequisite of S. 111(1). Hence, virtual marking may have utility, but may not satisfy the provision.

It may be argued that in case of more than one patent numbers, the article can be marked with one of the patent numbers along with the description ‘other patents available on the abc web addresses. This will satisfy the requirement of putting a patent number. This will satisfy the requirement of putting the number on the product as well as granting access to the consumer to the other patents, hence providing a constructive notice. However, this can only qualify as one interpretation out of many. It is an established rule that interpretation of statutes require the consideration of the legislative intent. In Manmohan Das Shah vs. Bishun Das[1] , the Supreme Court held that-

The ordinary rule of construction is that a provision of a Statute must be construed in accordance with the language used therein unless there are compelling reasons. Such as, where a literal construction would reduce the provision to absurdity or prevent the manifest intention of the legislature from being carried out.”

The main intent of the provision is providing notice to a potential infringer. The intent of the statue is to enable the best possible way to spread awareness and virtual patent marking provides a way to display exactly what patents are active and along with their duration which will unarguably fulfil the legislative intent.

VIRTUAL PATENT MARKING IN INTERNATIONAL JURISDICTIONS

Jurisdictions around the world have allowed virtual patent marking sans any ambiguity concerning its capability to provide a constructive notice and spread awareness.

The United States of America, through its Leahy-Smith America Invents Act, 2011 allows patented articles to be virtually marked[2], thus providing an alternative to physically marking the products. The article has to be marked by the words “patent” or “pat.” followed by the web address where the patent information is contained.

In the United Kingdom, the law was amended in 2014 to allow for virtual patent marking in the country as well. The process is similar to that is the US with the articles being marked “patent” or “patented” along with the web address containing the information on the related patents.

Both the US and the UK laws require the manufactures that the web address containing the information about the patents must be accessible for free to the public.

Although not explicitly allowed, the Australian Patents Act, 1990 does not forbid using the virtual marking method for marking of the patented products. The Australian act states that “If patented products marked so as to indicate that they are patented in Australia[3]. Hence, it does not anywhere states the method that needs to be adopted for marking the patented articles and virtual marking can be very well used in the Australian jurisdiction.

Since accepted in the U.S, a number of companies have adopted virtual patent marking; however, explicit rules to monitor virtual patent marking are indispensible. For example, in case of Kleenex[1], the web address on the tissue box, redirects the consumer to the parent website with a list of brands and corresponding countries instead of a page which directly shows a list pertaining to the tissue box bought and the country that it was bought in. This defeats legislative intent.

PROBLEMS WITH VIRTUAL PATENT MARKING

Virtual patent making has not been without its faults. In fact, this system is currently so vague that manufactures are opting out of it until clarification by the courts is given. Interpreting the language of the statue in the absence of any court decisions has proved to be pretty confusing. The laws allowing virtual marking have failed to define what constitutes ‘accessible free of charge to public.’Does free of charge means free of any monetary consideration or free from any consideration? Can the company providing patent details ask the user to first register on their web page? Can the company monitor the user using cookies on their web page? What will happen in case of a broken URL, will that be considered a constructive notice or not? All these questions have been left unanswered and have created a cloud of uncertainty around virtual patent markings. Moreover, the question of whether companies, using their own web address on the patent marking, are allowed to do so or not is also an issue which has been left unexplained.


Author: Niharika Sanadhya (jr litigation associate), Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1]http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/IP_Performance_2017-18.pdf

[2] AIR 1967 SC 643

[3] Section 287(a)

[4] Section 123, Patents Act, 1990

[5] http://cesari-reed.com/virtual-patent-marking-companys-attempt-fail/


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