Llegada al país de matemáticos extranjeros

The analysis above indicates that only s 178(2) of the Patents Act and s 18 of the ACL will create liability for false patent marking. This means that, broadly speaking, the approach to enforcement endorsed by Cotter exists in Australia. That is, Australian law provides a nominal fine through s 178(2) and the possibility of much higher fines, proportionate to injuries caused to consumers or

185 _{Thomas F Cotter, ‘Optimal Fines for False Patent Marking’ (2010) 17 Michigan Telecommunications and Technology Law}

Review 181.

186 _{Ibid 188.} 187 _{Ibid 195–6.}

188 _{Ibid 190–1; Patents Act 1990 (Cth) s 123.}

189 _{Thomas F Cotter, ‘Optimal Fines for False Patent Marking’ (2010) 17 Michigan Telecommunications and Technology Law}

Review 181, 190–2.

190 _{Ibid 191–2.} 191 _Ibid.

192 _{For a more in depth review, see ibid 189–98.}

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competitors, through s 18. Whilst these basal aspects are complied with, a range of problems still exists with the regime. These problems are identified in this section and some minor legislative amendments recommended. However, in the absence of empirical data showing significant negative effects of false patent marking, major amendments that would see Australian false patent marking provisions comply with what Cotter describes as an ‘optimal’ system, are not currently required. The first two problems with Australian false patent marking laws are the lack of clarity on the penalty and mental state requirement in s 178(2). The penalty in s 178(2) does not create a great incentive for private prosecutors and this incentive is only reduced with the lack of clarity. This is exemplified in Elconnex in which the applicant did not argue false patent marking under the Patents Act 1952

(Cth), even though no patent had been applied for and the finding of misleading and deceptive conduct was clear.193 _{To enhance the operation of the provision, a mens rea requirement should be}

specifically excluded due to the difficulty in proving intention and the onerous nature of the pleading requirements for fraud. The penalty should be clarified as a large nominal fine, consistent with Cotter’s rationale. Additionally, the Minister’s consent requirement should be removed because it is unnecessary.

In post-AIA US, it has been suggested that a public body should enforce false patent marking.194 _The

governments in Australia and the US have always had the power to enforce these laws but have not done so. There are three main reasons why governments should enforce false patent marking. First, private parties may not have sufficient incentive to litigate because it is difficult for them to quantify harms they suffer.195 _{Second, even if false patent marking causes no consumer or competitive harm,}

it still undermines trust in the patent system. Third, if it is known that the government is willing to litigate this may deter patent marking in the future. The Commonwealth Director of Public Prosecutions currently has jurisdiction under the Director of Public Prosecutions Act 1983 (Cth),196

but with such a broad portfolio it seems sensible to confer jurisdiction on the Australian Competition and Consumer Commission (‘ACCC’) which has expertise in the area and complements its s 18 ACL

powers.

An additional feature of conferring jurisdiction on the ACCC would be to have it exercise its associated enforcement provisions from the Competition and Consumer Act 2010 (Cth).197 _In

particular the ACCC can require claims promoting goods to be substantiated.198 _{In the circumstances}

of patent marking this attribute is highly desirable because it gives the ACCC a cheap and simple

193 _{Elconnex Pty Ltd v Gerard Industries (1991) 32 FCR 491, 493–4.}

194 _{Nicholas W Stephens, ‘From Forest Group to the America Invents Act: False Patent Marking Comes Full Circle’ (2011–}

2012) 97 Iowa Law Review 1003, 1025–7.

195 _{Christopher G Granaghan, ‘Off the Mark: Fixing the False Marking Statute’ (2011) 89 Texas Law Review 477, 496–8.} 196 _{Director of Public Prosecutions Act 1983 (Cth) s 6(d).}

197 _{Competition and Consumer Act 2010 (Cth) sch 2, pt 5-1.} 198 _{Ibid s 219.}

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mechanism to compel parties to inform the ACCC which patent(s) they believe apply to their product. For example, if a patent holder produces an article that states ‘patented in Australia’ on it, the ACCC can request the patent holder supply them with details of the patent that protects it.

Whether or not $10,800 can be considered a nominal fine is open to debate. For a large commercial company with millions of dollars of intellectual property related expenditure it may seem minor, but for a start-up company, severe. On the other hand, the value to society of deterring false patent marking should not be overlooked. Companies should know what patent rights protect their products in each jurisdiction and mark accordingly. If there is confusion over whether a patent protects a product, it is of the patent holder’s own making. Patent rights holders acquired or articulated the bounds of their own patents, and expiry dates are normally self-evident. Consequently, a nominal fine towards the higher end of what may be considered ‘nominal’ may be a good deterrent against false patent marking that is self-inflicted and should be easily avoided. Moreover, patent holders who mark products genuinely believing patent claims protect a product will be afforded the defence of honest and reasonable mistake of fact.

An additional problem with s 178(2) arises when patents expire. One amendment brought into effect by the AIA was that products marked with expired patent numbers that once protected the product no longer constitute false patent marking. One of the key reasons for this amendment was that using the patent number, a person could look up the US Patent Office’s website and see the patent had expired.199 _{Similarly, it provides a means to discern how the invention works.}200 _{It has been argued in}

the US that expiration dates on patents can sometimes be hard to calculate and therefore confuse the issue of expiry.201 _{But in Australia expiry dates are much more obvious: the bibliographic data on}

IP Australia’s AusPat website informs readers if a patent has expired, and if not lists the expiry date. As analysed above, articles marked with patents that previously protected them will likely constitute false patent marking in Australia under s 178(2). However, based on the fact there is limited evidence of false patent marking negatively effecting consumers or competitive markets, and no evidence at all that expired patents that once protected products do, Australia’s false patent marking laws should be harmonised with those in the US on this point. This would exclude liability for false patent marking arising when an expired patent is applied to a product it once protected, but only in the circumstances the mark includes the Australian patent number. However, it should also be noted that if, consistent with the arguments in the previous chapter, virtual marking is permitted in Australia, then false patent marking should not arise if a virtual mark is used either.

199 _{Laura N Arneson, ‘Defining Unpatented Article: Why Labeling Products with Expired Patent Numbers Should Not Be False}

Marking’ (2011–2012) 95 Minnesota Law Review 650, 668–70.

200 _{Ibid 670.}

201 _{Clontech Laboratories Inc v Invitrogen Corp, 406 F 3d 1347, 1367 (Fed Cir, 2005).}

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Throughout this chapter, the absence of empirical data on false patent marking in Australia has been highlighted. The amendments presented in this section are based on the best data available. If, in the future, empirical data shows that false patent marking has more pervasive effects on competitive markets or consumers, then it may be necessary to amend ss 29 or 33 of the ACL to create liability for false patent marking and thereby allow applicants to pursue pecuniary penalties. This would also broadly align with what Cotter would consider ‘optimal’. However, in the absence of such data these amendments, which are much more substantial, are not currently warranted.

Conclusion

The comparison of US and Australian law conducted in this chapter, although not conclusive, generally indicates that false patent marking is not having a significant negative effect on Australian competitors or consumers. However, the analysis of Australian laws in light of the US boom-bust cycle, and what has been described as an optimal enforcement mechanism, does indicate a lack of clarity and other imperfections in the Australian provisions.

In the absence of empirical evidence demonstrating negative effects caused by false patent marking, modest amendments are recommended to improve the enforcement of the current system; namely: the penalty should be clarified as a large nominal fine; the ACCC should be given jurisdiction to enforce s 178(2) under the Patents Act; the requirement in s 178(2) that the Minister’s consent be obtained before prosecution can be commenced should be removed; and marking a product with a patent number that is now expired, but prior to expiry validly applied to the product, should not constitute false patent marking.