Pat. Pend Flashback: Patentees Could Still Face Stiffer Penalties for Mismarked Patents

In the July 2009 issue of Pat. Pend., Boyle Fredrickson shareholder Mathew E. Corr commented on separate lawsuits filed against Solo Cup Company and Gillette for false patent markings. Both suits were prominent examples of mass produced products that were marked with out-dated patent information, which could still cost the parent companies millions of dollars.

Knowing the importance of maintaining updated patents, Corr reminds businesses that “Patentee liability for mismarking patents has been expanded, thanks to a 2008 Federal Circuit Court of Appeals decision in Forest Group v. Bon Tool. The potential for significant penalty exists as the Federal Circuit adopted a per article interpretation of ‘offense.’”

According to Corr, individuals or corporations should note this ruling as it concerns their patent markings on products. A civil penalty for false markings of goods is addressed in 35 U.S.C. 292 of the Manual of Patent Examining Procedure (MPEP) which states in part, “Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word ‘patent’ or any word or number importing that the same is patented, for the purpose of deceiving the public…Shall be fined not more than $500 for every such offense.”

The phrase “for the purpose of deceiving the public” creates an additional requirement of intent but does not change the relationship between the act of marking an article and the penalty.

Boyle Fredrickson has a proprietary docketing system that is used to track patents issued to clients ensuring they are properly informed concerning the useful lives of their patents for product marking purposes. For status questions on any of your patented properties, or concerns about how patent liability may impact you, be sure to contact your Boyle Fredrickson attorney.