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False Marking of Patents

The opposite of proper marking of patents is not necessarily false marking. False marking involves deception of the public. False marking occurs when a product for sale is marked “patented” when it is no longer covered by patent protection. In particular, 35 U.S.C. 292(a) states in relevant part that “Whoever marks . . . or uses in advertising in connection with any unpatented article the word ‘patent’ . . . for the purpose of deceiving the public . . .  or ‘patent pending’ . . . Shall be fined not more than $500 for every such offense,” (emphasis added).

In practice, false marking leads to someone bringing a law suit against the false marker. Either the government or a private individual can initiate the suit. 35 U.S.C. 292(b) states that “Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States,” (emphasis added). Thus, in principle, anyone, even someone who is not harmed by the false marking, can bring a law suit for damages against a patentee who sells an article that is falsely marked.

The Forest Group, Inc. v. Bon Tool, Co., 590 F.3d 1295; 93 U.S.P.Q.2D (BNA) 1097 (Fed. Cir. 2009) is a recent case involving false marking of construction stilts. This case has changed the long-standing damage principle to a “per item” basis instead of a “per marking” basis. The Forest Group court states that “the statute’s plain language requires the penalty to be imposed on a per article basis.” Id. at *10. Forest Group overturns a 100-year precedent set in London v. Everett H. Dunbar Corp., 179 F. 506 (1st Cir. 1910). For more information on this topic, see a recently published and informative article on false marking (pdf format) by Justin E. Gray and Hal Wegner.