Patent holders have the right to indicate patent information on their patented products or the packaging of the patented products. The patent marking also highlights to the public the relationship between the marked product and the patent, the rights of patent holders, and the patent protection system. With the continuous improvement of China's intellectual property environment, there is an increasing attention on how to regulate the patent marking to protect the rights and interests of patent holders. This article outlines thke related provisions and information about patent marking.
Patents/Applications suitable for marking
Patent marking should be used for products or their packaging related to valid patents or patent applications.
The patents used for patent marking should be granted and in valid state. Patent applications that have not been granted patent, patents declared invalid, patents terminated due to non-payment of annuities, voluntarily abandoned patents, and patents whose term has expired shall not be used for patent marking.
The patent applications used for patent application marking should also be valid. Final-rejected patent applications, deemed withdrawn patent applications, and voluntarily withdrawn patent applications shall not be used for patent application marking.
Subject of the marking
Patent holders or authorized licensees have the right to do patent marking. Patent applicants or authorized licensees also have the right to make patent application marking.
Phrasing of the marking
According to the relevant regulations, when making a patent marking, the following information should be indicated:
1) the type of the patent, clearly stating in Chinese, such as Chinese Invention Patent, Chinese Utility Model Patent, or Chinese Design Patent.
2) Chinese patent number, for example: ZL 202110000000.0.
When making a patent marking on products obtained directly by the patented method, their packaging, or accompanying materials such as instruction manuals, it should be clearly indicated in Chinese as "该产品系依照专利方法所获得的产品" (This product is obtained by the patented method).
Furthermore, additional textual or graphic markings may be added, but they must not mislead the public in terms of their content and the manner in which they are marked.
Before the grant of a patent, when making a patent application marking, the following information should be indicated:
1) the type of the patent application, clearly stating in Chinese, such as Chinese Invention Patent Application, Chinese Utility Model Patent Application, or Chinese Design Patent Application.
2) Patent application number, for example: 202110000000.0.
3) Noting "Patent Application, Not Yet Allowed."
Carrier of the marking
Patent/patent application marking can be made on products, product packaging, product manuals, product promotional materials, company websites, online selling sites and marketplaces, and other applicable platforms.
However, in product advertisement, granted patents can be used, while pending patent applications that have not been granted should not be used.
Period of the marking
Patent marking should be used within the validity period of the patent. After a patent has been declared invalid, terminated due to non-payment of annuities, voluntarily abandoned, or expired, the patent marking is prohibited.
Making a patent marking on patented products, products obtained directly by the patented method, or their packaging, before the termination of the patent but selling or offering for sale such products after the termination of the patent is a legitimate act and is not an act of passing off a patent. However, continuing to make the patent marking after the expiration of the patent term would be considered as an act of passing off a patent.
Making a patent application marking should be done after the filing date of patent application but before the grant. After a patent application has been final-rejected, deemed withdrawn, or voluntarily abandoned, making the patent application marking is not permitted.
Relevance of marking and product
The technical scheme(s) involved in the patent marking should be presented in the patented product. The product design involved in the design patent marking should be consistent with the patented design.
Functions of the marking
Warning: The patent marking declares that the marked product is a patented product and is protected by law. Without the permission of the patent holder, no one is allowed to exploit the patent or engage in manufacturing, using, selling, offering to sell or importing patented products for business purposes.
Differentiation: To distinguish the marking patented products from other normal products in the market, so as to avoid confusion among consumers.
Promotion: Through the patent marking, consumers are aware of that the technology, method, design, etc., involved in the product are patented and protected under the laws. It signifies that at least a part of the product should possess patentability, including novelty, inventiveness/originality, practicality, etc. It is expected to have advantages over conventional products in terms of technology or functional usage, which helps to enhance consumer trust in the product's quality and thereby helps to expand the product's market share.
Enforcement: For willful patent infringement with severe circumstances, the patent law specifies punitive damages, which can range from double to five times the determined amount according to statutory methods. The patent marking can serve as evidence in the chain of proof to demonstrate the infringer's willful infringement. For example, if the accused infringer is aware of or has come into contact with a product marked with a patent marking, it implies that they subjectively should have known that the product is protected by a patent. If they produce or sell identical products without the consent of the right holder, it indicates subjective willfulness.
Legal consequences of improper marking
If patent marking or patent application marking is improperly marked, violating the order of patent administration, the CNIPA and its local branches may order corrective measures. The corrective measures may include stopping the improper marking behavior; eliminating or rectifying the improper indicators on products or their packaging that have not been sold; ceasing sales or offers of sales if the marking on the product or packaging are difficult to eliminate or rectify; eliminating or rectifying the marking on materials that have not been distributed; destroying the materials that have not been distributed if the marking on the materials are difficult to eliminate or rectify; withdrawing patented exhibits from the exhibition, eliminating or rectifying corresponding promotional materials, replacing or covering up corresponding exhibition boards, etc. if exhibited; timely making correction if there are webpages with improper marking on e-commerce platforms, and deleting, blocking, or disconnecting such webpages if corrections are refused.
Failure to use patent marking or patent application marking in a proper manner may be determined as passing off a patent. In addition to civil liability in accordance with the law, the CNIPA and its local branches may order corrective measures and publicize the violation. Illegal gains may be confiscated, and fines may be imposed up to less than five times the amount of illegal gains. If there are no illegal gains or if the illegal gains are below five hundred thousand yuan, a fine of up to less than two hundred fifty thousand yuan may be imposed. If it constitutes a crime, criminal liability shall be pursued in accordance with the law.
In practice, patent marking or patent application marking should be good approach for various circumstances and worth the effort. If you have specific issues or questions regarding patent/patent application marking, or patent protection, please feel free to consult patent@afdip.com and bhtdlaw@bhtdlaw.com.
