Patent Law Practice Center

False Marking: A Patent Prosecutor’s Perspective

In a recent post titled, “False Marking: A Patent Litigator’s Perspective“, Brandon Baum, partner and IP litigator at Mayer Brown LLP, and I discussed the infamous issue of false marking and how he believes the proliferation of false marking suits are “a blip due to prior lax enforcement by patent departments, and will disappear quickly”.  Today, you’ll have a chance to read what Robert Faber, partner and patent prosecutor at Ostrolenk Faber LLP, has to say on the issue of false marking.

Without further ado, Robert Faber on False Marking….

Section 292 of the United States Patent Act (35 U.S.C. § 292) imposes a criminal penalty fine of up to $500 per false marking for falsely marking or advertising that a product is covered by an unexpired United States patent or an application for a patent, and the statute provides that whoever sues the false marking party for the penalty on behalf of the United States receives one half the penalty collected.

One reason for heightened interest in the statute is the recent Federal Circuit Court Opinion in Forest Group, Inc. V. Bon Tool Co., 590 F.3d 1295 (Fed Cir. 2009) that the penalty shall be computed based on every individual falsely marked article sold, not on a group of such articles sold in a single transaction. The penalty shall not be more than $500 for the offense of selling each copy, giving a judge discretion as to the per unit amount of the penalty and therefore the amount to be shared by the plaintiff.

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