Eye on IP

Vol. No. 2008 - Issue No. 3
May 2008

PATENT MARKING - BE CAREFUL OUT THERE

If a patent owner is selling a patented invention by selling goods, the patent owner can only recover damages for patent infringement activity that occurs after an infringer is notified of the infringement, unless the goods are marked with the patent number.

But what are the consequences of false patent marking? Is it false patent marking to include an expired patent on a product? Is it false patent marking to have a statement that this product "may be" covered by one or more of the following patents?

We may soon know the answer to these questions. There is a criminal provision for false patent marking. The provision allows for "any person" to sue for false patent marking for an amount "not more than $500 for every such offense," and share in the recovery.

A Washington, D.C. patent attorney, Matthew Pequignot, filed lawsuits alleging false marking, suing Solo Cup, Gillette and P&G. In response to a motion to dismiss, a district court judge held that listing of expired patents may constitute false marking and the use of the language "may be covered" does not provide a safe harbor.

You may ask what is the big deal when there is only up to $500 at stake. An argument can be made that each time an individual product is falsely marked, that is another $500. One can imagine how many cups Solo may have sold with the alleged false marking. Mr. Pequignot may have found a gold mine.

Until this plays out, it is recommended that patentees be very careful about marking products.

More information about this topic can be found at: http://www.patentlyo.com/patent/2008/05/false-marking.html.

"Eye on IP" is a trademark of Sheldon Mak & Anderson. Information provided in the "Eye on IP" newsletter is not intended to be a comprehensive summary of recent developments in the law, treat exhaustively the subjects covered, provide legal advice or render a legal opinion.