作者：Gregory B. Gulliver
From: Gregory B. Gulliver
Re: Marking products sold in the U.S. with foreign patent numbers.
This memo answers the following questions; 1) is marking a product sold in the United States with a foreign patent number allowed; 2) if allowed, what is the requirement; and 3) if improperly done, what is the liability.
With regards to marking a product with a foreign patent number, most countries with patent laws allow marking a product. But, it is a common theme in most patent laws to make it illegal to deceive others about patent protection. With regards to United States patent laws, 35 U.S.C. §292 addresses marking a patented product. 35 U.S.C. §292 states:
(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by same person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense.
(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.
Thus, the use of the term “patent” or “patent applied for”/”patent pending” for the purpose of deceiving the public is illegal in the United States. So, the answer to the first question is that a product sold in the United States may be marked with a foreign patent number as long as the marking is not for the purpose of deceiving the public.
Now turning to the second question of the requirements for marking a product sold in the United States with a foreign patent number, we must look to the foreign countries patent laws that issued the foreign patent. For example, if a patent is issued in the Peoples Republic of China (PRC) the marking laws of PRC must be followed when marking a product. The relevant laws in the PRC patent laws are article 15 and article 83. Article 15 provides that a “patentee has the right to use patent marking and to indicate the number of the patent on the patented product or on the packaging of that products” and Article 83 of the Implementing Regulations of the Patent Law requires that such marking be in a prescribed manner. The prescribed manner is:
During the effective period of a PRC patent, patentees or licensees (if permitted to do so under the license) may place a patent marking and patent number on the patented products, products obtained directly using the patented method, or the packaging of such products. All patentees and licensees who choose to exercise this right must follow the requirements in the Provisions. These are:
· The type of patent must be specified in Chinese, i.e., (PRC Invention Patent), (PRC Utility Model Patent) and (PRC External Design Patent).
· A product obtained directly using a patented method or the packaging of such product should carry a statement in Chinese to the effect that “[This] product is a product obtained pursuant to a patented method.”
· Other words, graphical symbols, etc. may be used alongside the prescribed patent markings and patent numbers so long as they and their manner of use will not mislead the public.
· The patent number indicated must be the exact number issued by SIPO.
The Provisions provide that the local patent administrative authority can order rectification if the use of patent markings and patent numbers fails to comply with the Provisions. Further, improper use of patent markings and patent numbers that amounts to the passing off of patent rights is punishable under Article 59 of the Patent Law with fines of up to RMB 50,000.
Therefore, in order to use a marking for a patent issued by a foreign country, the patentee must follow the marking requirements of the issuing country.
The reason for following the marking requirements of the foreign country is the only purpose for marking a product sold in the United States with a foreign patent number is to receive protection in that foreign country. The foreign patent conveys no rights to the patentee in the United States. If the foreign countries marking laws are not followed when marking a product with the patent issued from that country, then there is an argument that the marking was done with intent to deceive because no protection in the United States or in any other country is accomplished by the marking.
To answer the last question about liability we must examine the elements for determining mismarking. Interpreting 35 U.S.C. §292, the four elements that must be proved for violation are: (1) a marking importing that an object is patented (2) falsely affixed to (3) an unpatented article (4) with intent to deceive the public. 263 F. Supp. 2d at 791.
If a foreign patent number is affixed to product sold in the United States and it does not follow the patent laws for marking from the issuing country, then we believe that all the elements are found. The fine in the United States for deceiving the public about a product being patented is $500 per occurrence.
Mismarking a product may violate other federal and state laws dealing with false advertising and unfair competition, such as section 43 of the Lanham Act. A product that is mismarked or represented as having some type of patent rights in the United States when no rights exist (such as with a foreign patent number that does not follow the marking laws of the issuing country) is possibly in violation of these laws.
现在转向第二个问题，将标记有外国专利号的产品在美国销售需要满足什么条件？我们必须考虑到授予该专利权的相应外国法律， 举例来说，如果该专利权是依据中华人民共和国(大陆)的专利法而被授予的，那么在产品上标记专利号就必须遵守中华人民共和国专利法的相关规定。中华人民共和国专利法中与此相关的是第15条和第83条。 第15条规定，专利权人有权在其专利产品或者该产品的包装上标明专利标记和专利号。而且专利法实施细则第83条还规定：专利权人依照专利法第十五条的规定，在其专利产品或者该产品的包装上标明专利标记的，应当按照国务院专利行政部门规定的方式予以标明。此处所述“规定的方式”是指：
* 采用中文标注专利权的类别，例如中华人民共和国发明专利、 中华人民共和国实用新型专利、中华人民共和国外观设计专利。