In just over a year, more than 700 patent marking cases have been filed.  This is the fallout from a 2009 federal court decision incentivizing third party plaintiffs to file suit for false patent markings.  On December 28, 2009, the federal court held §292 of the Patent Act (35 U.S.C.  §292 ) requires a per article fine of up to $500.  Third parties are rushing to file qui tam suits and reaping the financial benefits.

The federal court ruled in Forest Group, Inc v. Bon Tool Co. No. 09-1044 (Fed. Cir. Dec. 28, 2009), that the false marking of each item manufactured is a violation of 35 U.S.C. §292 (False Marking – Patent Law.)  In addition, it was also held that the fine per item can range from a fraction of a penny up to $500, at the total discretion of the court.  Plaintiffs are highly motivated to file suit because they share in the fines, 50/50 with the government.

Patent marking cases are being taken seriously with stiff consequences because the markings indicate the status of a product.  It is not an invitation to seek further information.  It serves as actual notice to possible infringers; and, patent holders can only sue to enforce their patents if their products are properly marked.   A patent marking is fact.  False markings curtail fair business practices, competition, and even scientific development.

A false marking can occur in four ways:

1.      A product is marked with an expired or otherwise non-existent patent

2.      A product is marked with a current patent but doesn’t meet the requirements of the patent

3.      A product is marked with “patent pending” when no such application has been made

4.      Advertising materials indicate that the product is patented

Under current law, it is unclear how the penalties for false advertising materials will be assessed.  For instance, if a website indicates falsely that a product is patented, is that one violation with a fine of up to $500?   Or, and more likely, is it a violation for every view of the site with the potential of millions of views times up to $500? 

Banks, clothing manufacturers, and video game companies are just some of the defendants of patent marking cases.  So for Brooks Brothers, that’s up to $500 for each bow tie sold with the markings of an expired patent.  Any company or individual that marks a product or advertises a product as patented or that a patent is pending is subject to patent marking laws and the resulting litigation. 

It is imperative that your products and advertising materials be properly marked.  Marking carries responsibilities and because patents, by their very nature are time limited, you must police your markings on a regular basis.  If you have any questions or concerns about patent marking or patents themselves, consult with a qualified patent attorney.