Patent Act Article 187: Patent Marking
This article is a compilation and revision of other articles. Links to the original articles are provided at the bottom of this page.
Products sold in stores, as well as their boxes and packaging, sometimes bear labels such as "Patented Product" or "Patent No. XXXX." This type of labeling is called "patent marking."
Looking at this in more detail, common labels applied to products related to patented technology include "Patent Pending," "Patent Applied For," "Patented Product," "Patented Technology," and "Patent No. XXXX." Among these, patent marking refers to "Patented Product," "Patented Technology," and "Patent No. XXXX."
Article 187 of the Patent Act restricts patent marking to "only" patented products and prohibits false patent marking. Note that false patent marking is also regulated under the Unfair Competition Prevention Act, in addition to the Patent Act, to prevent misleading representations. Specifically, false marking occurs (Article 188 of the Patent Act) when patent markings are applied to non-patented products, products infringing on patent rights or exclusive license rights, or advertisements for such items, or when markings are used that could be mistaken for patent markings.
Since Article 187 of the Patent Act is a duty of best efforts, there is no legal disadvantage (such as claims for damages) in Japan if patent marking is not performed.
However, in the United States, if patent marking is not performed, claims for damages for past infringing acts may be limited (35 U.S.C. § 287(a)). Specifically, regarding product patents, if patent marking is not applied to the patented product, claims for damages are only permitted for infringing acts that occur after notification of infringement (35 U.S.C. § 287(a)).
The troublesome part is that patent marking in the U.S. must be applied to "all products" that fall within the scope of the patent rights (including licensed products). In other words, even if patent marking is applied to "only" some products, if there are products without the marking, there is a penalty regarding claims for damages.
Writing this much might lead one to imagine that product boxes would be filled with patent numbers. Furthermore, procedures for when new patent rights are established or when patent rights expire are also cumbersome. To address these issues, the U.S. allows for specific patent marking information to be provided on websites, etc. (so-called virtual patent marking). Specifically, the method involves: (1) including the words "patent" or "pat." and the URL of a website on the patented product, and (2) posting a list of patented products and their patent numbers on the page displayed at that URL (35 U.S.C. § 287(a)).
By using virtual patent marking, even when many patents are used for a single product, patent marking becomes easier, and adding or deleting patent numbers when new patent rights are established becomes simpler.
I posted an article titled "The Disadvantages of Patent Marking" for the "IP Lightning Talk #15 Extended Online Edition Winter 2022." This article introduces cases where patent marking had the opposite effect.
・Patent Act Article 187: Patent Marking
(Patent Marking) Article 187: A patentee, exclusive licensee, or non-exclusive licensee shall endeavor to affix a mark (hereinafter referred to as "patent marking") to a product that is a patented invention of a product, a product produced by a method that is a patented invention of a method of producing a product (hereinafter referred to as "patented product"), or the packaging of such product, indicating that the invention of the product or method is patented, pursuant to the provisions of an Ordinance of the Ministry of Economy, Trade and Industry.
・Patent Act Article 188: Prohibition of False Marking
(Prohibition of False Marking) Article 188: No person shall commit any of the following acts: (i) The act of affixing a patent marking or a mark confusingly similar thereto to a product other than a patented product or the packaging thereof; (ii) The act of transferring, etc., or displaying for the purpose of transfer, etc., a product other than a patented product, which has a patent marking or a mark confusingly similar thereto affixed to the product or the packaging thereof; (iii) The act of indicating in an advertisement that an invention is patented, or using a mark confusingly similar thereto, for the purpose of causing a person to produce or use a product other than a patented product, or for the purpose of transferring, etc. such product; (iv) The act of indicating in an advertisement that an invention is patented, or using a mark confusingly similar thereto, for the purpose of causing a person to use a method other than a method that is a patented invention of a method, or for the purpose of transferring or leasing such method.
●Past Articles
・(~22/01/24) Patent Act Article 187: Patent Marking
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