Patents

CIPO has announced an increase in their fees as of January 1, 2024. Their current fees will be increased by at least 25%. This increase will apply not only to trademarks, but also to patents, industrial designs and copyrights. For example, the anticipated official fee to file an application for registration of a trademark is being increased from $347.35 to $458.00 for the first class, and from $105.26 to $139.00 for each additional class. A majority of CIPO’s other fees are subject to a similar adjustment. As such, this increase will have an impact not only upon filing an application for registration, but also during the registration process and upon renewal. We therefore recommend that you review your intellectual property portfolio to determine if new applications should be filed or renewals effected before the end of the year. CIPO indicates that the increase will contribute to supporting its strategy on intellectual property which is aimed at offering services comparable to those offered worldwide. We hope that it will also reduce turnaround times!

A patent landscape provides a bird’s-eye view of the patenting activity related to a specific technology. It can be an invaluable tool for your organization as the analysis of patent data reveals business, scientific and technological trends. Indeed, many industries increasingly rely on patent landscapes to provides a basis for understanding innovation activity in their field. A landscape can tell you which organizations are working in your field, where they file their patents, who are their key inventors, and much more. The information derived from a patent landscape analysis can help you identify whether competitors are encroaching on your core market, design around others’ technology, identify licensing and M&A targets, headhunt new talent, and reduce legal risks, among others. A patent landscape analysis is a powerful tool as the insights it uncovers allow for forward-thinking, data-backed decision-making in business strategy, R&D investments, and IP strategy. To illustrate the usefulness of patent landscapes, we provide you below with some very high-level data on the patenting of cannabis-related technologies. Keep in mind that, when performing a patent landscape analysis with the help of your patent agent, much more information is provided and each set of data can be further drilled down to get ever more detailed information. Below, you will see how we could easily identify and measure the impact of the recent changes in the legal status of cannabis. This is a convincing demonstration of the power of patent landscape analysis to identify trends in a given industry. Please contact us to explore how a patent landscape analysis can provide your business with similarly powerful data in your field of expertise. Cannabis Patent Landscape analysis Let’s start with the number of patent applications filed each year. Variations in the number of patent applications filed tell you whether your industry is growing, declining, or mature (stable). Also, the appearance of patent applications tends to correlate with new innovative products entering the market. An increased number of recent applications foreshadows the apparition in your market of more numerous innovative products, thus increased competition. A low or decreasing number of recent applications indicates a less active area to technology where any new innovative product you launch may more easily distinguish itself from those of your (decreasingly innovative) competitors. For cannabis technologies, figure 1 shows that, after remaining more or less stable from 2000-2013, the number of patent applications filed doubled in 2014 and then continued to increase rapidly in the following years. This trend is expected to continue, albeit slower, with a predicted number of patent filings reaching 3000 in 2025. The 2013 inflection point clearly shows the impact of the changes in the worldwide legal landscape regarding cannabis throughout the years. Indeed, on November 6 and 10, 2012, the recreational use of cannabis was legalized for the first time in the American states of Washington and Colorado. These events signaled the opening of a very large market and triggered a so-called “Green Rush”, which saw the birth of multiple companies and the creation of hundreds of thousands of jobs in this new industry. Figure 1. Nb of patent applications filed per year Let’s turn now to the countries from which these patent applications originate. The country of origin of the patent applications in your field indicate where your innovative competitors are located. A large number of patent application originating from a given country may be reflective of the quality of the local environment supporting innovation in the field in term of, for example, increased access to capital, a larger pool of skilled talent, advantageous legislation, etc. Hence, such a country could be a worthwhile option to consider when opening a new branch, seeking a new partnership, or looking to acquire smaller innovative competitors. Also, an increasing number of countries from which technologies originate is indicative of growing global interest in your field. Conversely, a decreasing number of countries indicates that innovation in your field is being consolidated in specific geographical areas and could prompt you to research the reasons behind this shift e.g., market interest, legislative environment, extensive M&A, etc.   Fig. 2 below shows the countries from which the cannabis-related patent applications originate. The number of countries producing these patent applications nearly doubled, going from 34 for the period between 2000 and 2013 to 59 since, showing increased global interest. Nevertheless, innovation on cannabis is now more concentrated as a larger share of the applications come from the top 4 jurisdictions showing that this global interest did not raise equally everywhere. Indeed, together the United States, China, Great Britain, and Europe account for 89% of the patent applications filed since 2014, whereas they accounted for only 79.5% of those filed before 2013. Also, a larger proportion of the applications now originates from the United-States (from 39% to 58%) showing that the activity has greatly increased in this country thanks to the abovementioned legislative changes. This happened at the expense of almost all other jurisdictions, which have seen their share of the patent applications decline, with the exception of China, which kept about the same share (i.e., 20%-21%). This data shows that, if one were to look for a partner in the industry, the USA and China would be good places to start with. Figure 2. Jurisdictions from which the patent applications originated We can turn now to the jurisdictions in which the patent applications were filed. By looking at the countries in which your competitors field their patent applications, we can deduce where they believe their main markets are and where they believe their technologies is most promising. Again, the reasons underneath these numbers could be investigated: is a country selected because of the size of its market, its accommodating legislations, its business incentives, or other reasons? This can tell you where to file your own patent applications. It may also help you identify underserved markets that you may want to develop in with lesser interference from your competitors’ patents. Fig. 3 below shows the jurisdictions where patent applications related to cannabis were filed before 2013 and have been filed since 2014. Patent applicants now seek to protect their innovation in a greater variety of jurisdictions (57 compared to 66) indicating that cannabis innovators believe their market is now more global. On the other hand, patent filings have become more concentrated with the top 5 jurisdictions (China, the United States, WIPO, EPO, and Canada), which have increased their total share from 60% to 78.5% of all patent applications. This indicates that, despite the above, cannabis innovators are concentrating their marketing efforts in the USA, in Europe, and in China. Figure 3 also clearly reveals the impact of the 2018 legalization of cannabis in Canada. Indeed, it has had a clear effect with the country share of patent applications increasing from 6% to 9%. In other words, cannabis innovators are now filing twice as many patent applications in our country, showing it is now a more interesting market to them, probably due to the legalization of cannabis. Figure 3. Jurisdictions in which the patent applications were filed Let’s continue by looking at the technological sub-fields to which the patent applications belong. This provide a high-level snapshot of which technologies are being developed. More interestingly, this can be drilled down to narrower technological sub-fields, or by various countries, or by specific competitor to have yet more information on “who is doing what and where”. Figure 4 shows the technological sub-fields to which the cannabis-related patent applications filed since 2014 belonged. We can clearly see, somewhat unexpectedly, that the recreational use of cannabis, while responsible for generating initial business interest in the field, does not seem to be the driving force behind patenting activities. Indeed, one might have expected activities ancillary to such use including technologies to grow, cultivate, track, and store cannabis, would be prominent. It rather seems that the health industry dominates since most of the patent applications relate to medicinal preparations and drugs for specific disorders. A smaller number of patent applications relate to foods with modified nutritive qualities and methods of isolation (extraction). Interestingly, after some drilling down, we noted that China has the largest number of patent application filed in the following classifications: A61K36 – traditional medicines, and A61P1 – drugs for the digestion system, perhaps indicating a larger potential market for this type of innovation in this country. Meanwhile, the United States dominates in the following classifications: A61K31 – medicines containing organic ingredient and A61K9 – medicines having a special physical form. Figure 4. Patent classification distribution (the size of the boxes indicate their relative prominence) A patent landscape can help you identify who exactly is patenting technologies in your field. This allows you to identify your competitors as well as potential partners, licensees, or licensors. It also tells you whether innovation is driven by academic institutions (potential licensors) or by companies. You can also look at the size of your competitors to assess whether you are evolving among many small startups, competing against giants, etc. You can even look at the past litigation/enforcement behavior of the top patent filers as part of a risk assessment analysis. Again, this data can be drilled down to see what each top competitor is patenting, where, and when and where they themselves are located. Therefore, to conclude this “Patent Landscape Teaser”, figures 5 and 6 show the top 15 owners of the cannabis patent applications filed between 2000-2013 and since 2014, respectively. GW, a British pharmaceutics company focused on cannabis products, has consistently been the top filer in this field. In contrast, all the other top filers have changed denoting a fundamental change in the cannabis industry landscape. Before, 2014, the top filers were mostly pharmaceutical companies and large corporations with varied business interests indicating that, for most patent filers, cannabis was more or less a side project. After 2014, many cannabis-focused companies appear and take top spots: Canopy Growth, Hexo Operations, Zelira, Bazelet, Syqe, Receptor, Nextleaf, Hanyi, and Radient. This trend clearly reflects the fundamental change brought upon the industry by the Green Rush, which led to the creation of numerous new players in the field. A company before 2014 clearly did not face the same challenges and opportunities as one evolving now. Figure 5. Top 15 owners of the patent applications filed between 2000-2013 Figure 6. Top 15 owners of the patent applications filed since 2014 In summary, the data shown above clearly illustrates the rapid and profound impact that the legalization of cannabis has had on cannabis innovation. The patent landscape analysis allowed identifying many trends and facts indicative of a nascent technological field or one having received a recent boost. In other circumstances, other trends would have been observed. For example, we can expect to see a reversal of most of the above trends as the technology matures yielding fewer patent applications, as less proficient companies fail yielding fewer patent applicants, and as the market stabilizes resulting in patent applications being filed in possibly fewer and more well-defined markets.

Last Wednesday (July 26), the Federal Court of Appeal (FCA) handed down its highly awaited decision on the patentability of computer-implemented inventions (software patents). In Canada (Attorney General) v. Benjamin Moore & Co. (2023 CAF 168), the FCA rejected the test proposed by the Intellectual Property Institute of Canada (IPIC) in the first instance decision, Benjamin Moore & Co. c. Canada. On the one hand, according to the Court of Appeal, Justice Gagné of the Federal Court should not have included IPIC’s proposed framework in the operative provisions of her ruling because it was not requested in the parties’ application. In addition, in the FCA’s opinion, establishing an analytical framework for software patents would be premature, as many issues have yet to be properly considered by any court in Canada. So, back to square one? Not quite… Review of the facts of the Benjamin Moore case (2022) This FCA decision—the most recent in the Canadian software patent saga—establishes a modicum of order against a highly unusual backdrop. For those of you who have just joined the debate, here is a short summary of the facts. As part of a national initiative, Benjamin Moore applied for two software patents in Canada in 2010.1 The software in question was designed to help users navigate a colour bank based on criteria such as “emotion” and “harmony”. In October 2014, both applications were rejected on the grounds that they dealt with non-patentable subject matter. By applying an analytical framework that the Canadian Intellectual Property Office (CIPO) referred to as a “problem-solution” approach, the CIPO examiner concluded that the inventions in question were akin to applying mathematical formulas to a database. Mathematical formulas, however, are not patentable. In May 2020, the Patent Appeal Board confirmed CIPO’s decision. In November 2020, Benjamin Moore appealed the decision before the Federal Court. In an unusual move, during a hearing on March 30, 2022, the Attorney General immediately acknowledged, in light of the Choueifaty2decision handed down in the interim, that the Commissioner of Patents did not apply the right test and agreed to send the patent applications back for review. In another unusual move, IPIC intervened as a third party on the grounds that the case transcended the parties’ interests because CIPO examiners continued to apply the incorrect software patentability criteria despite repeated criticism by the courts. In so doing, IPIC sought to take the matter further with a view to making the process of granting software patents more predictable, i.e., by setting out the analytical framework that CIPO should apply when examining such cases. In a surprising judgment, Justice Gagné agreed with IPIC’s request: the patent applications were sent back for review based on IPIC’s proposed analytical framework. This declaratory judgment recognized the need for IPIC’s proposed analytical framework. Overnight, this framework became the applicable test for software patents. IPIC’s intervention in Benjamin Moore (2022) or the need to clarify the analytical framework for software patents This was not the first time that IPIC intervened as a third party in a patent case. This type of participation is not always looked on favourably by the courts, particularly with regard to administrative reviews. Moreover, last Friday (July 28), in the case of Taillefer v. Canada,3 Madam Justice McDonald rejected IPIC’s intervention after applying the FCA’s three-step test.4 In her decision, she stated that “to the extent IPIC intends to make submissions on the issue of the proper approach to statutory interpretation, as noted by the Federal Court of Appeal above, such an intervention is inappropriate”. However, a number of patent agents and jurists were delighted in 2022 to see that a more predictable analytical framework had emerged. Clearly, IPIC’s intervention was unusual, but we must revisit the long-running Canadian software patent saga to fully grasp the problem that IPIC was attempting to resolve. It should be noted that the Patent Act remains silent on the topic of software. In it, an invention is defined as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter”.5 When software is being patented, we must fall back on a creative description of exactly what is involved, e.g., by describing it as a process or a storage device containing instructions that, once carried out by a computer, produce specific effects. The lack of a proper legislative framework for software leaves a void that the courts must fill by interpreting a law that was last overhauled when Windows 95 was released, along with its 13 floppy disks! In the early 1970s, the Patent and Copyright Office, tasked with examining patent applications, issued a notice for patent professionals explaining that, in its view, software was non-patentable subject matter. However, in the wake of United States v. Waldbaum,6 the Patent Office showed more openness, though it backtracked in 1978 in a bid to harmonize its practices with American and British jurisprudence at the time. In 1981, the Schlumberger case7 became the landmark decision in the area of software patents, with the court ruling that software that relied on the simple execution of a mathematical formula by a computer could not be patented. The Patent Office’s narrow interpretation led to the rejection of large numbers of patent applications. When these cases were appealed, however, most of them were deemed to contain patentable subject matter and were sent back to the examiners for further review. In 1984, CIPO’s directive became more permissive after amendments were made. In 2009, however, the Patent Office rejected an application that had been filed by Amazon, on the grounds that it dealt with non-patentable subject matter. In 2011, the FCA took the Patent Office to task for using a simplified test for evaluating software patents.8 The Patent Office appeared to be applying certain jurisprudence principles too generally, without taking the relevant facts and context into account. Amazon’s patent dealt with the use of cookies to facilitate online purchases without authentication (the famous “one-click” patent). CIPO had difficulty understanding that an invention could be entirely intangible. The patent was finally granted. However, instead of following the FCA’s recommendations, CIPO issued new practice notices in 2012 and 2013 without taking recent jurisprudence into account. The contradictions between the practice notices and the jurisprudence led to unpredictability in the patent review process, during which examiners either adhered to the practice notices or to the jurisprudence. In summer 2020, the Federal Court criticized CIPO in the Choueifaty case,9 explaining that the problem-solution approach described in CIPO’s Manual of Patent Office Practice was not in line with Canadian jurisprudence. In the aftermath of this decision, CIPO modified its practice notices by re-establishing certain principles that had actually been prohibited in the Amazon decision, such as applying principles of section 27(8) of the Patent Act to the notion of an “actual invention”, rather than to “the subject-matter defined by the claim”.10 In short, while the complexity of software grows exponentially, patent law is drawn one decision at a time, while inventors bide their time while grappling with various uncertainties. When IPIC intervened as a third party in the Benjamin Moore case and proposed an analytical framework, the hope was to put an end to 50 years of confusion and unpredictability. Unease in the aftermath of Benjamin Moore (2022) Understandably, this declaratory judgment produced a certain sense of unease among CIPO and the Attorney General, who appealed the matter in fall 2022. Following the Federal Court judgment, CIPO argued that it would be difficult for an examiner to adapt the analytical framework to new situations without risking a contempt of court charge. In addition, since the initial Federal Court application filed by Benjamin Moore was not aimed at obtaining a declaratory judgment, the Attorney General argued that the Court should have adhered to the conclusions sought by Benjamin Moore and the Attorney General. The appeal of the judgment thus focused on whether it was appropriate to issue a declaratory judgment that imposed an analytical framework at the request of a third party. Judicial minimalism — Benjamin Moore (2023) In its 41-page decision handed down on July 26, the FCA reiterated the importance of judicial minimalism while granting the Attorney General’s request to do away with CIPO’s analytical framework. The FCA was unequivocal when it came to including the analytical framework in the mechanism provided for in the lower court ruling: Given the lack of a detailed analysis in the FC Decision, the Federal Court’s statement that the current version of MOPOP (as amended by PN2020-04) was irrelevant, and the lack of consideration of all relevant case law, it appears to me that it did little more than “leapfrog” the test to our Court by including it in its judgment instead of its reasons. This exercise, which is quite different from dealing with an issue that was not necessary to determine the appeal before it in obiter, is inappropriate. It does not involve “judicial courage”, as IPIC argued before the Federal Court.11 The FCA also noted that “interveners cannot seek a remedy that was not sought by the parties themselves”.12 Moreover, it stated that “subject to limited exceptions, unless a request to include a particular framework for all computer-implemented inventions in the judgment is a remedy specifically sought in the notice of appeal, it should normally not be considered”.13 Finally, recognizing that the Federal Court does have the power to render declaratory judgments, the FCA noted that even if an application is duly submitted, the court’s “discretion to grant such relief can only be exercised after considering the four-part test set out by the Supreme Court in Ewert v. Canada, 2018 SCC 30 at paragraph 81”.14 Rejection of IPIC’s analytical framework After concluding that she could have rectified the lower court judgment by applying the four-part test, Justice Gauthier held that IPIC’s proposed framework was not adequate and that too many open questions remained that should be analyzed by the courts before any such analytical framework could be imposed. The decision, however, offered some obiter advice by emphasizing the need for patents to add to the body of human knowledge. In this regard, Justice Gauthier wrote “[The] difficulty often lies in determining where the discovery lies, i.e., what new knowledge has been added to human wisdom” and further on, “If the only new knowledge lies in the method itself, it is the method that must be patentable subject matter.” Now that IPIC’s proposed framework was rejected, practitioners will have to fall back on previous decisions to determine whether software is patentable or not. The challenge posed by software patents To understand why CIPO is reluctant to grant software patents at times, we must bear in mind that patents are an exception to the principle of competition. Section 79(5) of Competition Act15 stipulates that exercising a monopoly obtained via a patent or other intellectual property rights is not an anti-competitive act. This privilege, which is granted to the patent-holder for a 20-year period, is designed to provide compensation for the public disclosure of the invention, with potential benefits for society as a whole. The exchange principle is not a recent development: most patent systems in current use were inspired by England’s Statute of Monopolies adopted in 1623. The odds are, however, that the English in the 17th century had no inkling that software applications would ever come into existence. Historically speaking, patented inventions include a tangible component: a machine, a device, the transformation of raw materials, etc. In contrast, unpatented inventions often have an intangible quality, e.g., abstract ideas, mathematical formulas, esthetic considerations, music, etc. When software applications emerged, sophistry became inevitable! Moreover, the notion of “software” itself is hard to define. Software is more than the code used to put together an application (code is copyright-protected, rather than patent-protected). For example, two programmers following the same requirements and specifications will no doubt end up creating different implementations, compiled to different machine instructions. Once these instructions are executed, however, what could be regarded as the same software will emerge. In some ways, patenting a software is akin to patenting certain aspects of its specifications. When we are interested in a mechanical invention and we describe its fundamental components, we realize that it is made up of parts with specific shapes and sizes attached to each other. In contrast, when we break a software application down into its fundamental components, we find various states, thresholds and conditions, which are often described using abstract concepts and mathematical formulas. Unfortunately, these components are dangerously akin to a type of subject matter formally excluded by the Patent Act. Section 27(8) thereof states that “No patent shall be granted for any mere scientific principle or abstract theorem”. This exclusion is designed to ensure that scientific principles remain universally accessible with a view to fostering research and innovation. Therefore, examiners are duty-bound to reject applications that appropriate scientific principles. Depending on whether an examiner focuses on the overall objective of the software or on its individual components, he or she will conclude that it is patentable or not. The difficulty lies in recognizing that, as a general rule, software is more than a set of mathematical formulas. In other words, a much broader view is needed, i.e., one that looks at the forest as a whole, rather than at the individual trees. That is what the Canadian courts have referred to as “purposive construction”. In the Benjamin Moore case, the FCA described purposive construction as a “difficult exercise even for judges”16 and pointed out that if errors do occur, it is because “CIPO and the Commissioner simply did not properly understand all of the subtleties of this difficult exercise”.17 Striking a more positive note in the same paragraph, the judge offered reassurances that the need to apply this method should no longer be problematic because “[as] noted by the AG, the Commissioner did not appeal the decision in Choueifaty, as it did help clear up some misunderstanding in respect of purposive construction […]”. Whether or not we find that reassuring, we have to acknowledge that IPIC’s intervention might not have been the ideal solution to this problem, particularly when we realize that Benjamin Moore was taken hostage by a debate that transcends the private sphere. No doubt, IPIC’s efforts do deserve recognition. But perhaps we should also be asking ourselves whether allowing the courts to draw up an analytical framework one decision at a time is an effective way of establishing software patent law, especially when such a piecemeal manner of progression undoubtedly comes at the expense of the inventors. https://www.ic.gc.ca/opic-cipo/cpd/eng/patent/2695130/summary.html and https://www.ic.gc.ca/opic-cipo/cpd/eng/patent/2695146/summary.html Choueifaty v. Canada (Attorney General), 2020 CF 837. Taillefer v. Canada (Attorney General), 2023 FC 1033. Right to Life Association of Toronto and Area v. Canada (Employment, Workforce and. Labour), 2022 CAF 67. Patent Act, RSC 1985, c. P-4, sec. 2. In re Waldbaum, 559 F.2d 611, 194 USPQ 465. Schlumberger Canada Ltd. v. The Commissioner of Patents, [1982] 1 CF 845. Amazon.com, Inc. c. Canada (Procureur général), 2011 CAF 328 Choueifaty v. Canada (Attorney General), 2020 CF 837. Amazon.com, Inc. v. Canada (Attorney General), 2011 FCA 328, par. 39. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, par. 29. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, par. 32, citing Tsleil-Waututh Nation v. Canada (Attorney General), 2017 CAF 174, para. 54-55; Zak v. Canada (Attorney General), 2021 CAF 80, para. 4 Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, par. 34, citing Pfizer Canada Inc. v. Teva Canada Ltd., 2016 CAF 218, para. 21 to 22; Boubala v. Khwaja, 2023 CF 658, para. 27; Hendrikx v. Canada (Public Safety), 2022 CF 1068, para. 27. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, para. 35. Competition Act, RSC 1985, c. C-34. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, para. 43. Canada (Attorney General) v. Benjamin Moore & Co., 2023 CAF 168, para. 44.

“Clear skies overhead, patent marking protects well, innovation blooms.” “Patent marking” is the practice of labelling a product to provide notification that it is protected by one or more patents. From a public perspective, it serves three related purposes: avoiding innocent infringement; encouraging patentees to give notice to the public and aiding the public to identify whether an article is indeed patented. (Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1998, p. 1443). From a patent holder’s perspective, patent marking puts the public on notice that the product is protected by one or more patents, which can deter potential infringers from copying the invention without permission. Additionally, it can help establish that an infringer had knowledge of the patent, which can be important in determining damages in an infringement lawsuit. Indeed, in some jurisdictions, and in particular the United States, proper patent marking serves as notice to an infringer, thereby allowing a patent owner, when suing an infringer, to demonstrate earlier infringement, which may result in higher monetary damages in a patent infringement lawsuit. The ability to establish higher potential damages may also provide for an improved negotiation position in discussions vis-à-vis a settlement or a potential sale. As such, patentees who make, offer for sale, sell, or import any article covered by a patent would be well advised to mark a patented article. Patentees should also require their licensees to do the same and monitor licensee products to ensure the licensee complies with the marking requirements. United States Current U.S. case law suggests that marking should only be required when a commercial product is covered by a product (apparatus/system) claim. In cases where there are only method and/or process claims in a patent, the courts have generally indicated that there is no marking requirement. Properly marking patented products at an early stage can have a significant positive impact on the calculation of damages, since such calculation takes into account damages accrued only after an infringer received either “constructive” or “actual” notice of the alleged infringement. This can be done by physically affixing a notice to the product if possible, or by including the notice in packaging or advertising materials. The notice should typically include the word “patent” or the abbreviation “pat.” and the number(s) of the applicable patent(s). Marking can also help enhance damages for past infringement, as the patent statute provides for enhanced damages and attorney fees in cases where an infringer has actual notice of the patent. Not marking or incorrectly marking a product directly affects available remedies. Indeed, the patent marking statute 35 U.S. Code § 287 provides that a patent owner is required to mark their products that are covered by one or more patents with the appropriate patent numbers: “… by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent … or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. …” Although patent marking is not required by law, 35 U.S. Code § 287 further encourages patent holders to give public notice of a patented article through physical application of the patent number to the article by providing: “… In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.” It is worth noting that marking a product with a patent that does not cover the product, without the consent of the owner or marking the product as patent pending when there is no patent pending may create liability for false patent marking. As a result, ensuring patent marking is accurate is an important feature of any patent marking practice. Marking a product with an expired patent, however, is not considered false patent marking thanks to amendments made to the marking statute in 2011. Also of note, once marked, a patent owner’s marking must be “substantially consistent and continuous.” (Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1998, p. 1446) Virtual Patent Marking The patent marking statute additionally provides that notice to the public may be given that a product is patented: “…by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.” A URL suitable for patent marking would reference a page which lists the patent(s) in question cross-referenced with at least one representative product and representative product numbers, for example. Images of the representative products are sometimes also included. A typical URL is www.widget.com/patents. Currently, it is not recommended to use other machine readable types of markings such as bar codes or QR codes. Europe The European Patent Convention (EPC) itself does not require marking. The EPC is also silent as to the ramifications of marking or not, and the question can really only be answered on a country-by-country basis. In the United Kingdom, for example, damages cannot be awarded or an order for accounting of profits cannot be made against an innocent infringer (see UK Patent Act, subsection 62(1)). Of note is that the onus is on the infringer to prove their innocence, i.e., that at the date of the infringing act they were not aware, and had no reasonable grounds for supposing, that the patent (or published application for a patent) existed. As such, correctly marked products that put the public on notice of the patent may be used as a barrier to an infringer attempting to claim ignorance of the existence of the patent. Of note is that the United Kingdom also provides for virtual patent marking, provided it is accessible to the public free of charge and it clearly associates the product with the number of the patent. In view of the above, however, marking products in Europe in order to put the public on notice of the patent or to establish that an infringer had knowledge of the patent may prove beneficial. Canada In Canada, patent marking is not required by law, meaning that it is not mandatory for a patent owner to mark their products or processes to indicate that they are protected by one or more patents, and the Supreme Court has confirmed that the fact that the public is notified by the marking of patented products should not be used to calculate damages. Regardless, there are some situations where a patent owner may choose to mark their products or processes in order to put the public on notice of the patent or to establish that an infringer had knowledge of the patent. However, care should be taken to ensure correct marking. Indeed, paragraph 75(1)(b) of the Patent Act provides that every person is guilty of an indictable offence and is liable to a fine of not more than?$200 or to imprisonment for a term of not more than three months, or to both, who with intent to deceive the public, offers for sale as patented in Canada any article that is not patented in Canada. Industrial Design In Canada, the law of marking related to industrial designs differs from that of patents. As seen above in regard to patents, marking effectively plays no role in the determination of compensation for infringement. With designs, however, marking can be a key factor in establishing monetary damages. Indeed, subsection 17(1) of the Industrial Design Act provides a defence to a finding of infringement in that, if the infringer can “establish” that they were not aware that the design was registered, the most the plaintiff can be awarded is an injunction. On the other hand, subsection 17(2) of the Industrial Design Act provides that if the plaintiff “establishes” that the articles or their packaging were marked to indicate that they are the subject of a registered industrial design, the infringer cannot take advantage of the defence of subsection 17(1) of the Industrial Design Act. The statute is particular, and it is important to mark items covered by the design correctly. In particular, the items must be marked with the capital letter “D” in a circle and the name, or common abbreviation, of the current owner of the design, for example ? Widget Ltd. Of note is that the design mark can be on the articles or the labels or packaging associated with the article. In summary, patent marking is an important aspect of patent law that allows the public to know that a product or process is protected by one or more patents, and also serves as a tool for patent owners to deter infringement, establish knowledge of the patent and collect damages for past infringement.