In some countries, to claim damages against infringers of your patent, you must have patent markings on your patented product. Marking laws help the public identify patented products and prevent innocent infringers from having to pay unfair damages.
In a recent 2020 case in the United States, Arctic Cat Inc. v. Bombardier Recreational Products Inc., the Court held that patent owners not only need to ensure:
a) they mark their products with the patent number, but also
b) take reasonable steps to ensure licensees of the patent mark their products with the patent number.
United States: Arctic Cat Inc. v Bombardier Recreational Products Inc.
In this case, Arctic Cat (the patent owner) entered an IP license agreement with Honda (the licensee). The agreement stated that Honda did not have any obligation to mark their products with the patent number of Arctic Cat’s patents. Furthermore, Arctic Cat did not take steps to ensure Honda marked its products.
When Arctic Cat wanted to enforce their patent against their competitor, Bombardier, they were not able to. As Honda’s products were not marked with the patent number, Bombardier was able to successfully argue that Arctic Cat had not provided notice of its patent rights, as required by US patent law.
Notice is satisfied by marking patented products with the patent number. It is not enough for the alleged infringer to be aware, on their own account, of a patent and their possible infringing actions.
This rule does not apply to patented processes and methods, or where the patentee never makes or sells a product protected by the patent.
New Zealand and Australia
There is no legal obligation to mark patented products in New Zealand or Australia. However, marking products with the patent number can help patent owners against infringers from claiming a defence of innocent infringement. A successful claim of innocent infringement may mean that damages or account of profits will not be awarded.
In most cases, marking the patented products is considered enough to put the alleged infringer on notice. Marking products makes potential infringers aware of existing patents, and so a defence of innocent infringement cannot be successfully raised.
Companies should also ensure that they are not falsely marking products as being patented when they are not. There can be significant financial consequences if companies deceive the public and falsely mark their products.