This blog post has been updated due to the America Invents Act enacted September 16, 2011. See Virtual patent marking and false patent marking post.
Upon filing a patent application or issuance of a patent, a product disclosed by the patent application or covered by the claims of the issued patent may be marked either “Patent Pending” or “Patented” together with the patent number. The benefit of marking a product as patent pending is that it provides a warning that exact copying may be tantamount to infringement upon issuance of the patent. Also, marking the product with the patent number allows the patent owner to seek compensation for infringement prior to actual notice of the patent at issue.
However, patent owners must be careful to ensure that the product marked as patented is indeed patented or patent applied for. Under current U.S. Patent law, anyone can file a lawsuit against a manufacturer that has falsely marked their product as patented with an intent to deceive the public. For example, if a patent application has become abandoned but the product still includes the “Patent Pending” mark, then others may have a claim against the product manufacturer for false marking. Under 35 USC Section 292, the public can sue the product manufacturer on behalf of the government for the sum of not more than $500 per each offense. This is referred to as a qui tam action. The government is seeking the help of the public to control false marking. The $500 maximum penalty may not appear to be much. However, it depends on how “each offense” is calculated.
The following case explains the meaning of “each offense.” Prior court decisions have reduced the severity of this penalty by counting each offense based on time (e.g., one week, one month, etc.). However, in The Forest Group Inc. v. Bon Tool Co. (Fed. Cir. Dec. 28, 2009), the Court held that the phrase “each offense” means each article or product. For example, if you sold 1,000 widget and falsely marked each widget, then the maximum potential liability is $500,000. This may seem unfair in light of the wide range of products that could be mismarked. For example, imposing a fine of $500 for each baseball cap may be unfair. The Court addressed this concern by pointing out that the $500 penalty is a maximum fine and not a minimum fine. Judges can adjust the fine amount to match the type of product so as to be fair.
Based on the foregoing discussion, it is important to consult with legal counsel to determine whether your product is patent pending or covered by your patent. Alternatively, you may want to consider removing any indicia indicating patent status on your product. Otherwise, you may find yourself defending a claim of false marking. Also, during enforcement of your patent, you may find yourself having to defend yourself against a counterclaim of false marking.
You may also be interested in Patent Marking.
For more information, please feel free to contact me.