Increased Liability For False Patent Marking Puts Patentees at risk

Added on : 20 January 2010
Filed under : Patents, Designs & Copyright

We are advised that the potential liability for false patent marking has significantly increased following a recent Federal Circuit decision.

Under US Law, (35 U.S.C. § 292), a fine of up to $500 “per offence” may be imposed for marking products with an invalid, expired, or incorrect patent number. The Federal Circuit's decision in The Forest Group, Inc. v. Bon Tool Company (No. 2009-1004 (Fed. Cir. Dec. 28, 2009) interpreted the false marking provision such that that each article falsely marked is an individual offence giving rise to a fine of up to $500.

This false marking provision is intended to discourage a patentee from misrepresenting an article as being protected by a patent. The false marking provision imposes a fine when a patentee fails to remove patented marking from an article when their patent expires or is held invalid as well as when an article is not actually covered by the patent referred to on the patented marking.

Any person may bring an action for improper marking of an unpatented article. However, the patentee’s liability for “false marking” requires an intention to deceive. Where accidental or unintentional marking is proven an action for improper marking may not be upheld.

Hence, it is increasingly important for manufacturing companies to review their product labelling to ensure that any patents referred to on the product and / or its packaging etc. do actually cover that product and that the product labelling is revised when patents expire, are about to expire or are held invalid.