False Patent Marking: The Federal Circuit Provides Some Clarity



Last week, in its highly-awaited Pequignot v. Solo Cup Co. case (No. 2009-1547), the Federal Circuit provided some much-needed clarity to patent false marking law. We note that the court’s decision favored false marking plaintiffs on a significant issue, but aided false marking defendants in other ways.

35 U.S.C. section 292 prohibits the use of a patent mark (e.g., “Protected by U.S. Patent X,XXX, XXX”) on an “unpatented article” (or its associated packaging or advertising) with the intent to deceive the public. Since the start of 2010, more than 130 false patent marking lawsuits have been filed nationwide. This surge of false marking suits was prompted in large part by the Federal Circuit’s December 2009 Forest Group decision, in which the court held that each mismarked product – not just each decision to mark, but each mismarked product – could result in a $500 penalty if the necessary intent to deceive the public were shown, with half of that penalty going to the plaintiff. See The Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1301 (Fed. Cir. 2009).

However, Forest Group left numerous key questions about false marking unanswered, including the following...

Please see full alert below for more information.

LOADING PDF: If there are any problems, click here to download the file.

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.

© Morrison & Foerster LLP | Attorney Advertising

Written by:


Morrison & Foerster LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.