False Marking: An In-House Attorney’s Perspective

I recently had an opportunity to discuss False Marking with Brandon Baum, partner and IP litigator at Mayer Brown LLP, (see “False Marking: A Patent Litigator’s Perspective“)  and Robert Faber, partner and patent prosecutor at Ostrolenk Faber LLP (see “False Marking: A Patent Prosecutor’s Perspective“).   It was interesting to see the varying opinion’s on the issue.  Today, you’ll have a chance to learn what Valerie Calloway‘s, in-house counsel at Polymer Group, Inc. and Patent Center Contributor, insight is on the issue of false marking.

When I caught up with Calloway, I asked her the same questions that I posed to both Baum and Faber.  Here is what she had to say…..

Me: Do you think we’ll see companies begin to stop falsely marketing products in response to the suits?

VC: I believe companies will pay closer attention to this issue.

Me:  Do you believe false marking necessarily causes injury?

VC:  In some cases yes and in some cases no. It depends on the situation. (more…)

Inequitable Conduct As An Affirmative Defense

Robert Faber, partner at Ostrolenk and Faber LLP and Practice Center Contributor, recently passed along a great article called Prosecution Ethics   he wrote for the upcoming PLI program: Advanced Patent Prosecution Workshop: Claim Drafting and Amendment Writing.  In the article, Faber discusses the Patent and Trademark Office Duty of Disclosure Rules and in partiuclar what types of failure to provide different forms of information to PTO Examiners have been found by Courts to be inequitable conduct.  Faber explains that the duty of candor and good faith is breached when an affirmative misrepresentation of material fact, faliure to disclose material information or submission of false information occurs.  He then discusses particular cases when the Court has found inequitable conduct.

I caught up with Faber and asked him about one particular inequitable conduct allegation that has recently been getting more attention – “Burying” (submitting information material to an Examiner’s examination of a patent application where that submission includes a large quantity of other less relevant material).   (more…)

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.


False Marking: A Patent Litigator’s Perspective


I recently read that on the heels of the Forest Group Inc. v. Bon Tool Co.,  decision more  than 100 plaintiffs have filed false marking suits in 2010.  I’m sure that is a scary statistic to the dozens of companies that are potentially facing false marking suits.  I had an opportunity to discuss the issue of false marking with two of our Patent Center Contributors, Brandon Baum, a partner and intellectual property litigator at Mayor Brown LLP and Robert C. Faber, partner and patent prosecutor at Ostrolenk Faber LLP.  While some of their viewpoints are similar, Baum and Faber both have a unique perspective on the topic.

Here is what Brandon Baum, the “patent litigator” , has to say on the issue…

Me: Do you think we’ll see companies begin to stop falsely marketing products in response to the suits? 

BB:  Yes, though the question presumes that companies are “falsely” marking (i.e., with intent to deceive) rather than inaccurately marking (i.e., without intent to deceive).  It will become a priority for companies’legal departments to monitor patent marking and, particularly with respect to expired patents, remove them from packaging. 

Me: Do you believe false marking necessarily causes injury?

BB:  As a general proposition, I think we would all agree that one should not mark a product as being covered by a patent when one knows it is not. I believe that Congress could reasonably believe that false marking causes injury, just like any other sort of false labeling of a product.  (more…)

Patent Claim Writing: Insight Into The Drafting Process

Last week, I attended PLI’s Fundamentals of Patent Prosecution 2010 Program: A Boot Camp for Claim Drafting and Amendment Writing in New York City.  I was fortunate to hear an elite panel of experienced patent prosecutors  talk about critical patent application topics.

Amongst the group, was Robert Faber, partner at Ostrolenk Faber LLP and one of our Practice Center Contributors.  He spoke about claim drafting and gave some valuable tips as to how to write a well written claim.  Faber said, ” you want to protect the invention in a claim such that you cover the concept the inventor has in mind and no matter how the particular concept  is executed in years to come.”  Faber advises that you should always describe the concept as broad as possible.

Below is an article Faber passed along, “Patent Claim Writing“, that helps us understand the basics of claim drafting, using a simple example:

United States Patents serve the important national goal of encouraging developments in the useful arts and sciences by granting inventors and their assignees patents that afford a limited time monopoly in their inventions in exchange for their disclosing the invention and how to practice it to the public.  In the patent document, patent practitioners and patent owners= attorneys try to adequately disclose the invention and at least the best mode of practicing the invention sufficiently to enable persons skilled in the art to themselves practice the invention without undue experimentation. 35 U.S.C. ‘ 112, para. 1.  That is the minimal disclosure that must be provided. (more…)