Patent marking entails marking a patented product with its relevant patent number. Proper patent marking can help obtain higher monetary damages in a patent infringement lawsuit, as marking means that infringers cannot claim ignorance of liability. However, if there is no marking, damages are likely to be calculated only from the time of actual notice. For tangible or physical products, it is convenient to mark a patented product with the relevant patent number. However, the marking of patented software raises unique problems as it is not feasible to fix a mark on the software itself. This note discusses the challenges associated with the marking of software products and possible strategies to overcome the same.

Patent Marking under Indian law

The nature of marking required in order for it to operate as adequate notice to an infringer, is provided in Section 111(1) of the Indian Patents Act, 1970 (“the Act”), as follows:

“In a suit for infringement of patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.

Explanation.- A person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word “patent”, “patented” or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question.”

This clause establishes that a patent number or numbers must be mentioned in addition to terms like “patent” or “patented” in order for patent marking to constitute notice in a given case. Section 120 of the Act related to “False Marking” suggests that patent marking can also be stamped, engraved, or impressed on, or otherwise applied to, the article.

In cases where it is not practical to print the mark due to size and other restrictions, the mark may also be affixed to the product’s packaging. Nowadays, virtual marking of products has gained popularity worldwide; this requires a webpage link to be referred to on the product. This is helpful especially when the product is covered by a number of patents.

In the case of software, recommended ways of marking, i.e., stamping, engraving, or impressing, will work only when software is sold on a storage device, e.g., a CD. However, this will not work for software that is downloaded directly onto a device, which circumvents intermediary physical items (e.g., CD) or packaging. Sections 111(1) and 120 of the Act also do not provide any specific guidance for the marking locations for software products.

Consequences of failing to mark the product

There are two direct implications of not marking a product properly, or not marking at all. Firstly, such a situation supports the case of the defence in patent infringement suits. In such cases, damages or an account of profits shall not be granted against the defendant who proves that, at the date of the infringement, the defendant was not aware and had no reasonable grounds for believing that the patent existed. Unless the product carries a patent marking along with the patent number, the defendant shall not be deemed to have been aware of or have reasonable grounds for believing that a patent exists.

Secondly, the law provides for a fine for False Marking. Such a situation might arise where a patent for the product does not exist in India and the patentee marks the product as “patented” with or without a number. Failure to mention the name of the country in which the patent exists shall imply that the patent exists in India. This is deemed as false marking and is punishable with fine.

Do software products need to be marked?

The intent of Section 111(1) of the Act is to provide notice to the public that a particular product is patent protected. Although marking is not mandatory, it is always recommended, especially to avoid issues around the recovery of damages from infringers. Indian courts have not had occasion to test these provisions, but there are a few US court decisions that state that software products are also subject to marking requirements. The following section lists some strategies for marking software products, based on various US decisions on the issue.

Strategies for marking software products

1. Physical Media –When physical media, such as a disk or CD, is used to distribute patented software, it is recommended to mark the physical media with the relevant patent number to give proper public notice. This is simple and convenient, considering that there is usually enough space on the disks and CDs for such marking.
2. Website – When software is downloaded from a website, it is always a good strategy to provide the patent notice on the website from which it is downloaded or accessed.
3. User Interface – It is a healthy practice to provide public notice, g., via a user interface, wherever possible, even if the software patent is directed towards a process or method. When software is distributed via direct download, marking the software may be done by mentioning the relevant patent numbers in the user agreement. Such user agreements are usually provided before the software is installed on the device, and require affirmative action from the user to proceed with such installation, thus serving as proper notice to the user. In cases where installation is done by a vendor, the inclusion of the patent numbers on the login screen may provide sufficient notice to the actual user of the software. Besides these, notices can also be provided in other sections frequently accessed by users, such as the user manual or the help section.

Conclusion

Although Indian patent law or Indian courts have not provided any guidelines specifically for marking software products, some direction can be found in other jurisdictions, notably the US. Jurisprudence establishes that software products are subject to marking requirements, and also provide guidance as to the form such marking can take. Proper marking of any product, including software, provides constructive notice to a potential infringer of the patented product and shifts the burden of proof on the defendant to prove that they were not aware of the existence of such a patent. Thus, patent marking is both advantageous and recommended for any software product as any failure to comply with this can become a costly oversight for the patentee.