Patent Term Extension

Extensions for protection of up to five years may be available in various jurisdictions for patents claiming inventions in certain fields requiring marketing approval and/or subject to regulation, such as but not limited to, medical (e.g., drugs and medical devices), food, feed and agro (e.g., agrochemicals and plants) products that require and/or have received regulatory marketing approval, under certain circumstances.

Extending the duration of a patent requires filing an application to this effect with the patent office in each jurisdiction in which patent term extension is available and desired, within a specified time period from the date of issuance of the marketing approval in that jurisdiction, depending on the jurisdiction, typically within a few weeks. Therefore, please advise us of any developments towards marketing approval of the product subject of the patent(s) to be extended.  Should you require additional information regarding this issue, we remain at your service.

Registration of IP rights with Customs

Enforcing intellectual property rights through customs is an essential mechanism for protecting brands, innovation, the economy and a key strategy to prevent counterfeit and pirated goods from entering the market. While customs authorities act as a first line of defense against the trade of infringing goods, the process involves collaboration between IP holders, customs authorities, and other stakeholders. It’s an ongoing process, requiring constant adaptation to address emerging threats and challenges. Customs Authority inspect shipments of goods on its own initiative. They have several tools at their disposal to prevent entry of infringing goods. These measures are typically taken at the border, during the importation or exportation process. There is also legislation available for the registration of IP rights with Customs. This allows rights holders to register, depending of the jurisdiction, their trademarks, patents, designs, copyrights, and other relevant IP rights with Customs to prevent the importation and distribution of counterfeit or infringing goods. For example, European Regulation No. 608/2013 enables the registration of IP rights, including trademarks, designs and patents, with European Union Customs. To initiate Customs surveillance, an application must be filed with Customs authorities, providing the Customs authorities with as much information as possible to help them identify goods potentially infringing the applicant’s IP rights. Once the application is submitted and approved, Customs will suspend the release of any goods they suspect of infringement. They will then notify the rights holder or their representatives, requesting an assessment to confirm whether the detained goods are authentic or counterfeit. If the goods are confirmed to be counterfeit, Customs will proceed in accordance with the laws of the European country where the goods were detained, whereas in some European countries is classified as a criminal offense, wherein in other the counterfeit goods will be confiscated and destroyed. This registration is a key measure to prevent counterfeit goods from entering the market in the specified jurisdiction.

We are prepared to assist you, through are tight connection with foreign associates at every stage of the process, including: (1) drafting and filing applications with Customs; (2) liaising with Customs authorities to ensure awareness of the rights to be monitored; (3) managing cases of suspected infringement reported by Customs.

 Please contact your patent attorney if you wish now or in the future to file suitable applications to resister your IP rights in specified customs or otherwise assert your IP rights.

Patent Marking

If the patented article (e.g., product, process or service) is manufactured, it is strongly recommended that the article be marked with the patent number. Not marking the article may affect your rights in the event of an infringement of your patent. The mark must be legible and unconcealed. Traditional marking requires patent numbers to be labeled on a physical article. However, virtual marking allows a company to update its patent details on articles without having to re-label or re-produce a line of articles each time a related patent issues or expires. 

Virtual marking is accomplished by marking the article or packaging/brochure/website with a URL, or web address.

USA: The requirement according to USPTO is by fixing on the article or package a label containing the word “Patent” or the abbreviation “Pat.”, together with either the number of the patent, or an Internet address associating the patented article(s) with the number of the patent(s). For example: Patent: https://companyname/patentsandapplications

On the webpage, you are required to associate the patented article with the patent number, to the point that the viewer is able to make the association between the product and the patent number(s) easily. A marked product should be covered by at least one claim in each patent it is associated with. A website that simply lists a firm’s patents without mention of the products each one covers may not constitute ‘association’ between product and patent. In order to correctly associate patents with products, it is recommended to include on the webpage both the product name and the associated patent numbers in a format that makes clear the connection between these two sets of identifiers. You may use the following format for your virtual patent notice: Virtual Patent Marking Notice by [COMPANY LEGAL NAME]

The following products are protected by patents in the U.S. and elsewhere for [COMPANY LEGAL NAME]. This website is provided to satisfy the virtual patent marking provisions of various jurisdictions including the virtual patent marking provisions of the America Invents Act and provide notice under 35 U.S.C. §287(a). The following list of products and patents may not be all inclusive. For example, some products listed here may be covered by patents in the United States and elsewhere that are not listed, and other products not listed here may be protected by one or more patents in the United States and elsewhere. The following list of products may be covered by one or more of the following US Patents (you can include “and/or Patent(s) Pending” if you also have a patent application pending): Product Name Patent Number(s)

[PRODUCT #1 NAME]          [PATENT NUMBER 1]; [PATENT NUMBER 2]; [PATENT NUMBER 3]

[PRODUCT #2 NAME]          [PATENT NUMBER 4]; [PATENT NUMBER 5]; [PATENT NUMBER 6]; [PATENT NUMBER 7]; Patent Pending

Note: The marking must be substantial and continuous – all (not just some) of the products manufactured should be substantially marked, and the marking should be continuous over the life of the product or the patent (whichever is shorter). One should maintain records of the web page, including records showing that the web page was consistently operational. A marked product should be covered by at least one claim in each patent it is associated with. Periodically review your product and active patent portfolio to make sure the marked product is actually covered by the specific language of your active patent claims and to remove patents that no longer cover the product. Other examples: www.nike.com/patentsvirtualmarking, tivo.pactsafe.io/legal.html#patents, www.totani.co.jp/en/patent.html, www.actifio.com/patents, www.bunn.com/patents, www.owenscorning.com/en-us/patents,

Other Countries: In other countries, the rules may vary.

EUROPE: In Europe, marking a product with inapplicable patents (incorrect patent numbers or with patent numbers which are no longer in force in particular jurisdictions) can create liability for false marking. For example in Germany, you CANNOT mark a product with a patent if it is not registered and valid in Germany (you cannot even write “patent pending”), so it should be very clear from the marking if the Patent is registered in Germany or not. For this reason Virtual marking is most beneficial in Europe since maintaining and updating a webpage which displays a listing of the patent(s), validated in certain countries only, for each product is easier than changing the physical labeling of a product or its packaging.

ISRAEL: There are no marking requirements for IP rights in Israel. It is, however, a criminal offence to make false representations as to the existence of an IP right. Section 183(c) of the Israel Patent Law read as follows: “If an infringement was committed after the patent holder or exclusive licensee warned the infringer, then the Court may order the infringer to pay punitive compensation, in addition to the compensation which it adjudged under subsection (b), in an amount that does not exceed that compensation”. Based on Section 183(c) above, if the patented article is manufactured, it is recommended that the product be marked with the patent number, or by way of virtual marking. Not marking the product may affect your rights in the event of an infringement of the patent. It is to be noted that case law deals with what means of warning is required, however patent marking is not mentioned. In addition, punitive compensation will be awarded by the courts only seldom and under exceptional circumstances.

CHINA: When marking patent marks, the following information shall be indicated:

1) The type of patent in Chinese – PRC Patent is “中国发明专利“. (PRC utility model is “中国实用新型专利“, PRC Design is “中国外观设计专利“).

2) The Patent number. If marking is done before granting of a patent, it should include the PRC (Patent is “中国发明专利“) and the Application number, as well as the words “patent pending”(which is “专利申请，尚未授权”

Working of Patent

Subject to local regulations, if a patent has not been worked on a commercial scale within a period (usually 3 years) from issuance, a party having a legitimate interest may apply to the Commissioner for the grant of a compulsory license on the ground of non-working (or certain other grounds such as public interest, etc.). However the Court would not grant a compulsory license where it is satisfied that the patent owner justifies the non-use by proving legitimate reasons, or if they prove that effective preparations for exploitation have been carried out, or if they justify the lack of manufacture or commercialization by proving the existence of legal obstacles. In certain countries it is possible, however not mandatory, to demonstrate working of the Patent by filing a “Working Statement”, in order to discourage third parties from filing such a request.

In India under the Indian Patent Law, Patentees and Licensees are required to file periodic (every 3 years) Working Statement declaring the commercial use of the Patent during the previous Financial period. If the patent is not worked in India, reasons are required for non-working of the patent to avoid compulsory licensing of the invention, including measurement being taken for working of the Patent. Non-filing of Working Statement does not result in revocation of Patent, however it may result in imposition of fine in India. Furthermore, a Patentee who submits false information is subject to fine and/or imprisonment.

Disclaimer: The information provided on this webpage does not constitute legal advice and is intended for general informational purposes only. Information on this webpage may not reflect the most up-to-date legal developments or other information. The webpage contains links to other third-party websites for convenience purposes only. Ehrlich Group assumes no responsibility or liability for any errors or omissions in the content of this page.