Greenwich Clock – marked with reference to patentee but lacking a patent number

The Intellectual Property Act 2014 received Royal Assent on 14 May 2014 and makes a number of changes to intellectual property (IP) law in the UK.  The provisions of the Intellectual Property Act start to come into force from 1 October 2014. In this post we take a look at the issue of marking products with patent numbers, how the IP Act is impacting this issue and what the consequences of not clearly marking your products could be.

Current position

Section 62(1) of the Patents Act provides an “innocent infringer” defence in patent infringement proceedings. The section states:

In proceedings for infringement of a patent damages shall not be awarded, and no order shall be made for an account of profits, against a defendant … who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed; and a person shall not be taken to have been so aware to have had reasonable grounds for so supposing by reason only of the application to a product of the word “patent” or “patented”, or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words in question.

So essentially if the defendant can show (and the burden of proof is on the defendant) that they didn’t know of the patent they are alleged to be infringing then damages will not be awarded (or an account of profits will not be made). Marking of the product with the patent number however skewers this defence. (Mere marking with the words “patent” or “patent applied for” or the like is not sufficient. The patent number needs to be present as well.)

A well marked product

Consequences of not marking your products

The potential consequences of not marking your products in the above manner was demonstrated in the relatively recent case of Collingwood v Aurora which was discussed in Field Fisher Waterhouse’s recent Patent Experts Seminar (see earlier posts on this seminar relating to Alice v CLS Bank here and a look back at the Trunk design case here)

In this case the claimant Collingwood contended that Aurora had infringed its patent for a fire resistant LED downlight. Over the course of paragraphs 1 to 71 of the judgement Aurora’s original product and its redesign are found to infringe the patent in question. Paragraphs 72 to 87 of the judgement however then take a detour into “Knowledge and damages” as Aurora attempt to run a section 62(1) defence as the judge assesses whether adverts placed by the defendant into trade magazines that also carried reference to the claimant’s “innovative” products and “patented design” would have been enough to tip Aurora off that there could have been a patent to the Collingwood product.

The judge concluded that

I have to sat that I consider it unlikely that neither the advertisement nor the feature about the FireLED passed unnoticed by anyone involved in either the design or sale of LED lighting at Aurora at the time when they appeared. On the balance of probabilities, I find that Aurora would have been aware of at least one of the advertisements/advertorials promoting the FireLED.

Neither feature nor advertisement identifies the Patent or refers to the patent application by number. But in a field where manufacturers do seek patents for luminaires involving innovative features – Aurora held 10 patents for downlight units – and the product is described as innovative, in my judgment this would be sufficient to put Aurora on notice that the FireLED might have patent protection.

This was clearly from the judge’s comments in paragraph 79 expensive litigation and this part of the proceedings could possibly have been mitigated or avoided if Collingwood had clearly labelled their products.

What’s changing in the Intellectual Property Act 2014

Under section 15 of the IP Act, section 62 of the Patents Act 1977 is to be amended such that products may be marked either by “the number of the patent or a relevant internet link“.

“A relevant internet link” is also defined a reference to an address of a posting on the internet—

(a)which is accessible to the public free of charge, and

(b)which clearly associates the product with the number of the patent.”

This provision comes into force on 1 October 2014 and will hopefully make it easier for companies and patent holders to mark their products.

Further reading

The UKIPO’s “Webmarking of patent products – business guidance” document can be found here.

IPcopy on patent markings on vintage recreation products can be found here.

Mark Richardson 16 September 2014