False Marketing Penalties in Patent Inventions
Patents are marked after filing a patent application and its issuance to protect against patent infringement. Patent marking provides the patent owners protection against their patented inventions being copied, used, or sold without their permission.
There are two types of patent markings:
Once a patent application has been approved, it is marked as patented to protect against infringement. The patented product must be clearly marked with the “Patent Number” or “Pat Number” or the “Patent” or “Pat” internet address/website (virtual patent marking). This provides constructive notice to anyone with the intention to infringe on a patented article, serving as a warning that legal action can be taken against them if they infringe on it.
“Patent Pending” or “Pat Pending” is used to mark patent inventions that are in the process of being patented. This indicates that the patent application has been filed and is being reviewed. The average time for the pending patent application process is 23 months and can go up to 3 years or more in some cases.
The patent pending notice does not provide any legal protection to the patent and serves as a warning to potential infringers that the patent application is under process. If the patent application is approved, the patent owner can sue for damages from the date his patent invention was infringed even if the patent had not been approved yet.
When the patent application has been approved or rejected, the “patent pending” marking must be removed from the product. False marking of a product leaves the owner open for lawsuits and a fine of up to $500 for each offense under 35 USC section 292. Each offense is calculated by the court based on time, articles sold, and other factors relating to the patented products.
The following patent case details show how the offense penalty was calculated during a patent infringement case.
Forest Group Inc. v. Bon Tool Co. (Fed. Cir. Dec. 28, 2009)
The Forest Group sued Bon Tool for infringing on its Patent Number 515. The Federal Court granted summary judgment in favor of Bon Tool stating that Forest falsely marked two of its patents even though they were not covered under the 515 patent. In this case, the Court held the false marketing offense according to each article. The Court also took under consideration the intent to deceive for false marking and after investigation declared that the Forest Group had no idea that two of their products were not covered by their patent # 515. Thus altering the maximum amount of fine for each article.
For example, if you sold one patented item with false marking, then you’re liable to pay a $500 fine, and if you sold 100 pens with false marking, then your offense fine would be $50,000. The Court pointed out that the maximum fine for each offense is $500, not the minimum. Therefore lowering the fine per each item would be a fairer decision as compared to charging $500 for each offense.
The above case represents how a false marketing claim can lead to lawsuits and expensive fines. It’s critical to seek legal counsel from a reputable patent attorney when filing patent applications and marking patented inventions, during and after the application process, actioning accordingly after the approval or rejection.
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