The road to protecting intellectual property can be long, arduous and fraught with unexpected hurdles, both legal and scientific. It often takes between two and five years to navigate the patent application examination process (also called the “patent prosecution”) to obtain granting of the patent. A granted, in-force patent then becomes a potent business tool for carving out a monopoly niche, out-licensing and obtaining financial support.

Both during the pendancy of the patent application and after the patent grant, it is important to adequately and correctly “mark” the invention. At its root, marking serves as a notice to the public that the given item is protected. Marking is preferably done directly on the patented product, but can also occur on the packaging or label, especially when direct product marking is impractical.

As is often the case in patent matters, marking requirements differ by jurisdiction. Fortunately, the rules in Canada and the United States are for the most part relatively similar. While there is no legal obligation to mark patented inventions, marking can promote the invention, dissuade competitors and facilitate the recuperation of damages.

Marking inventions covered by pending applications
Once a patent application is filed, the invention can be marked with “patent pending”, “patent applied for” or in French “brevet en instance”. It is generally not recommended to indicate the name of the applicant or the application number. Marking of a pending patent may also assist in obtaining damages for infringement perpetrated between the publication of the application and the grant of the patent.

Marking inventions covered by granted patents
Once the patent is granted, the invention can and should be marked with “patented” or in French “breveté”, in addition to the granted patent number. Indicating the correct patent number(s) on a patented product is particularly crucial in the United States to enable the patent holder to obtain damages from infringers. If a product is covered by multiple patents and applications, all of the granted patent numbers should be indicated in addition to “other patents pending".

False marking
Falsely marking a product as patented while the patent is pending, abandoned or expired is a serious offence, which may result in fines, patent unenforceability and sometimes criminal fraud charges. Marking must therefore follow the evolving status of the patent protection.

Nature of the claimed invention: product versus method
In general, it is advisable to provide patent marking whether the invention is a product, machine, method or process. For instance, a product manufactured by a patented process may still be marked with “protected under patent no. x,xxx,xxx”.

According to existing U.S. law for instance, a patent holder who does not properly mark a patented product is not entitled to damages for infringement prior to actual notice (such as a cease-and-desist letter) sent to the infringer. However, if the patent contains method claims for manufacturing the product, the patent holder may be able to claim damages even without marking its products or giving notice to the infringer. This is one of several good reasons to include method claims when drafting a patent application.

By the very nature of biofuels, patent marking is challenging. Biofuel producers should mark relevant process patents on shipment labels as well as on company websites, press releases and presentations. Equipment providers should directly mark their patented machines and replacement parts sold in the industry, while enzyme or micro-organism suppliers are likely better off marking their packaging and labels. There are many other possible marking strategies depending on the invention, the patent claims and the business model of the patent holder.

Jeremy Lawson is a patent agent at ROBIC in the fields of chemical and process engineering. Reach him at lawson@robic.com.