False Marking in the United States

It is my usual practice to advise clients to mark their patented products in the United States. This can help when extracting a damages payment from an infringer. The advice is to mark the product with the patent number so that it is clear that the product is covered by a patent. If it is not practical to mark the product, the associated marketing material should also indicate that the product is the subject of a US patent.

A number of my associates have warned me that the courts in the US are making full use of the "false marking" punitive provisions in their legislation.  

For example, In Forest Group v. Bon Tool Co., the Federal Circuit ruled that the $500 maximum false patent marking penalty of 35 U.S.C. § 292(a) should be imposed on a per article basis.  Therefore, each article that is falsely marked with the requisite intent to deceive constitutes a separate offence under § 292(a), which can result in substantial damage awards against patent owners. Any person can bring a false marking claim. So there is some concern that the decision may open the floodgates. 


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