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 as chip patents or construction method patents, it is rather difficult, if not impossible, to fulfill the marking requirement in conventional manner. Therefore, in practice, quite many manufacturers are apt to use their websites for patent marking, in order to significantly reduce the cost of marking, and to update the patent status in real time. However, whether or not the legal concept of "marking in a conspicuous manner that enables observers to have knowledge or have access to knowledge of the patented articles” covers virtual marking on web pages is still in a grey area. In this regard, it merits reviewing two Judgments rendered by the IPC Court.
In 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 has been fulfilled, as proven by such indication as 'NuBra Invention Patent No. 207830...' on the website "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 should be liable for civil infringement damages.
Conversely, in the IPC Court’s Civil Judgment No. 45 rendered in 2010, the court held that the patentee has marked its patented item in http://jinnhsin.tw.ttnet.net/. Although the webpage seemingly shows the patent number of the disputed patent, the patent number is too small in size to be seen visually, let alone that there is only a trademark indication on the photo of the patented item. In addition, as the publication date of the web page is October 22, 2010, the web page cannot be regarded as competent evidence proving that the item has been marked its patent number in-between March 2003 and March 2004.
The two judgments suggest that when marking on a patented item is limited by its size or nature, "patent marking through websites" should be a good choice. This is because the IPC court would not straightforwardly deny the competency of web pages on the ground that website is not a media exemplified 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 tends to adopt 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 relations. Moreover, the website on which 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.