The Federal Circuit's opinion in Forest Group dramatically alters the way in which the district courts must assess the penalty under Section 292 for defendants found guilty of falsely marking an unpatented article as if it were patented. Under the new standard the penalty is applied on a per article basis, and can range anywhere from fractions of a penny to $500 per article. This new standard, and the uncertainty in how district courts will set the penalty rate in a given case, provides greater financial incentive for plaintiffs to pursue false marking qui tam actions then they had before. Indeed, as noted in the opinion, there is a new breed of troll, the “marking troll” making its way on the scene and this decision will only embolden and encourage these plaintiffs to bring suits and push the envelope for what conduct constitutes false marking.
The article summarizes the Federal Circuit’s opinion, notes its likely impact in increasing the number of false marking claims filed, identifies questions left open by the opinion, and tries to provide an implicit warning to corporations to be careful in their marking efforts, including vigilantly ceasing to mark newly made products where a patent has expired.
Firefox recommends the PDF Plugin for Mac OS X for viewing PDF documents in your browser.
We can also show you Legal Updates using the Google Viewer; however, you will need to be logged into Google Docs to view them.
Please choose one of the above to proceed!
LOADING PDF: If there are any problems, click here to download the file.
Intellectual Property Updates
DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
© Robert Matthews, Jr., Matthews Patent-Law Consulting | Attorney Advertising