In patent infringement proceedings, an infringer can sometimes avoid or reduce their liability for damages if they can show that they had no reason to suspect that the infringed patent existed. This can be prevented where patent applicants and owners have marked their product (and/or its packaging and/or product information) with notices detailing their patents in force and/or pending patent applications that cover the product.

However, it’s an offence to falsely state that a product is protected by a patent, so patent owners must ensure that such notices are updated when their patent is no longer in force. It’s also in their interests to update such notices when a patent application is granted and comes into force. The time and cost of doing so can be significant if changes are required to manufacturing processes, tooling, or packaging.

In keeping with recent changes in US patent law, the UK Intellectual Property Office (IPO) has proposed the introduction of a ‘virtual patent marking’ notice. Under this system, products may be marked with a web address to a website on which relevant patents and patent applications are listed. This would mean that only the website need be updated to reflect changes in the status of a patent or patent application.

The UK IPO has opened a consultation on this proposal. Responses must be submitted by the closing date of 4 February 2013.

In particular, they want to hear what businesses think.

• Do you currently mark your products with a notice of your patent rights?
• If instead you could achieve the same benefit by marking your products with the web address of an online version of such a notice, what (if any) estimated cost saving would you make?
• Would the proposed website-based notice of patent rights encourage you to mark more of your products?
• Would it increase the burden you face when seeking information on other people’s patented products?
• Do you think that listing the relevant patent numbers provides sufficient notice of the patent rights protecting a product?
• Do you have any specific concerns about this proposal?
• In our view this proposal is to be welcomed. All too often, patented products are incorrectly marked. The advantages would certainly outweigh the possible extra burden involved in seeking information on other’s rights.

If you would like to know more about how the proposed change may affect you, and for advice on best practice in marking products and packaging with patent information under the current rules, please speak to your usual contact at Wilson Gunn.