Did the America Invents Act of 2011 kill “false marking” claims for relief? Yes and no, but, mostly, yes. It is now primarily the Federal government’s responsibility to protect consumers from false claims of patent protection. Wish us the best of luck.
35 U.S.C. 292 provided:
“Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or 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 the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense.”
This statute was interpreted to prohibit a patent number being placed on an article where the patent had expired, or where a patent never existed, or using terms that implied that the invention was the subject of a patent application that had already been filed when it had not. While the $500 maximum fine doesn’t seem like much, in 2009, the Federal Circuit in The Forest Group, Inc. v. Bon Tool Co., No. 2009-1044 (Fed. Cir. Dec. 28, 2009) construed that provision as requiring imposition of the fine on a per article basis; i.e. if one million products were falsely marked with an expired patent number, the potential damages were five hundred million dollars. The Forest Group decision sparked an avalanche of false marking cases, and potential Plaintiffs nationwide were combing store shelves and ads to search for markings of expired or questionable patents.
In addition to the changes highlighted in our prior post, that has all changed with the America Invents Act of 2011. Section 16 of the America Invents Act amends the False Marking provisions of 35 U.S.C. 292, so that now only the government can file false marking suits without having to prove competitive injury. In addition, expired patent marking no longer constitutes false marking. For all intents and purposes, now, false marking essentially only covers marking a product as patent protected when it is not when that marking results in a competitive injury. While those who can prove competitive injury based on false marking may still bring suit and be able to recover damages adequate to compensate for the injury, false marking “trolls” appear to be effectively out of the “false marking trolling” business. Unfortunately, so too are consumers who legitimately believed that a product was superior to competing products because it was patented.
Do you have a question about the effect of the America Invents Act on your business or invention? Reach out to The McHattie Law Firm for help.
(Abby Nickerson and Chris McHattie)