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FALSE MARKING OF UNPATENTED ARTICLES

by | Dec 28, 2009 | Patent | 0 comments

The federal false patent marking statute, 35 U.S.C. § 292, prohibits the false marking of “any unpatented article” with the word “patent” or other suggestions, such as advertising, that would indicate that the article is patented.  The goal of the statute is to avoid public deception as to whether a particular good is in fact patented. 

Several qui tam lawsuits, which are generally lawsuits brought by private individuals on behalf of the government, have been filed based on alleged violations of the false marking statute, and seek to impose up to a $500 penalty for each article that has been falsely marked.  For example, some of these lawsuits have been brought by consumers who have noticed expired patent numbers or false patent markings on everyday products, including paper cups and plastic utensils.     

There has been much debate over the appropriate penalty for falsely marking a patent number on a manufactured article.  On the one side of the debate are those, such as the consumers that filed the above-mentioned lawsuits, who contend that a penalty should be assessed for each and every manufactured article that bears the false marking.  They contend that, if a manufacturer decides to mark 1,000 products with a false patent marking, then the maximum penalty under the statute should be $500,000, or $500 per article, for each of the 1,000 items marked.   

On the other side of the debate are those, accused of false marking, that contend that the penalty should be imposed for each decision to mark a quantity of manufactured articles.  According to their contention, the statute should be interpreted such that, if a manufacturer were to decide to mark 1,000 items with a patent number, and the marking was later ruled to be a false marking, then the maximum penalty would be $500, based on the one decision to mark the articles. 

Earlier today, the Court of Appeals for the Federal Circuit issued a ruling that should clear up much of the debate.  In today’s decision, the appellate court interpeted the false patent marking statute, 35 U.S.C. § 292, to require a penalty for each article or good that is falsely marked with a patent number, and not for each decision to mark a number of goods, as suggested by one of the parties.  The appellate court did note, however, that $500 is the maximum penalty for each falsely marked article, and that judges will continue to have discretion to assess a lower penalty, according to the circumstances of a given case.  

You can read the Federal Circuit’s decision in Forest Group, Inc. v. Bon Tool Company et. al.here.