Article 98 of Taiwan’s Patent Act mandates that “all patented articles shall be marked with the patent number; if it is not possible to so mark the article, the owner may mark the labels, packaging, or make such markings in a conspicuous manner sufficient to draw observers’ attention. In the absence of such markings, the patentee when claiming damages shall provide evidence proving that the alleged infringer had knowledge or had access to knowledge of the patented articles.” On this score, patent marking is essential in order to reduce the burden of proof for damages in future infringement proceedings.
With the advancement of science and technology, the size of electronic products continues to shrink. Due to the size or nature of such patented products – for example, chips or construction methods – it is difficult, if not impossible, to fulfil the marking requirement in a conventional manner. Therefore, in practice, many manufacturers use their websites for patent marking, to significantly reduce the cost of marking, and to update the patent status in real time.
However, whether the legal concept of marking in a “conspicuous manner” that enables observers to have knowledge of, or have access to knowledge of, the patented articles covers virtual marking on web pages is still a grey area. In this regard, two judgments rendered by the IPC Court merit review.
IPC Court judgments
In the Intellectual Property and Commercial Court’s (the IPC Court's) 100 Civil Judgment No. 12 rendered in 2011, the court held that, as shown on the web pages and copies of the outer packages submitted by the appellant/patentee, the marking requirement had been fulfilled, as proven by an indication such as “NuBra Invention Patent No. 207830...” on www.nubra.com.tw, where the patented items are sold, and, besides, the label of the outer packaging of the patented items in the Chinese language and the name of the appellant/patentee are shown on the website. Therefore, the defendant was liable for civil infringement damages.
Conversely, in the IPC Court’s Civil Judgment No. 45 rendered in 2010, the court held that the patentee had marked its patented item on http://jinnhsin.tw.tt.net. Although the web page seemingly showed the patent number of the disputed patent, the patent number was too small to be seen, let alone that there was only a trademark indication on the photo of the patented item. In addition, as the publication date of the web page was October 22 2010, the web page could not be regarded as competent evidence proving that the item had been marked with its patent number between March 2003 and March 2004.
Key takeaways
The two judgments suggest that when marking on a patented item is limited by its size or nature, patent marking through websites is a good choice. This is because the IPC Court would not straightforwardly deny the competency of web pages on the ground that a website is not a medium covered by the Patent Act. Instead, the court would evaluate the substantive content of the web pages, especially whether the "patent markings displayed on the web page" and the "patented item" can be clearly cross-referenced.
In view of the above, if the patentee adopts a web marking, in addition to displaying the patent number, it is advisable to clearly illustrate the corresponding patent item protected by the patent, so as to facilitate recognition of their corresponding relationship.
Moreover, the website on which the marking has been made by the patentee must be easily accessible to the general public, and the updating and maintenance of the website must be consistent and constant. In this way, evidence from web pages may more readily form competent evidence capable of fulfilling the marking requirement under Article 98 of the Patent Act.
