A recent district court decision on false patent marking shows how easy it is for a company to be exposed to expensive litigation and large statutory damages if it is not careful in monitoring how its products are marked. But as we discuss below, it is also easy to reduce this risk.

Patent marking is an effective method of providing notice to infringers of product patents, as required under 35 U.S.C. section 287(a) in order to collect damages for infringement. (Patent marking is not necessary for process patents.)

But a patentee must be cautious to avoid liability under the false marking statute, 35 U.S.C. section 292, which prohibits the use of a patent mark on an “unpatented article” with the intent to deceive. The penalty for false marking is statutory damages of up to $500 per “offense.” The offense can, in theory, be defined as every article that is marked. Any person – not just someone with competing

patent rights – can sue to collect damages and keep one half of the award (the other half goes to the federal government).

In the recent case of Pequignot v. Solo Cup Co.,[1] Judge Leonie Brinkema of the Eastern District of Virginia adopted a broad reading of “unpatented article,” holding that once a patent has expired, a product covered by that patent is “unpatented” under section 292(a). Therefore, a marking that states, “This product is protected under U.S. Patent X,” where X has expired, can violate section 292

(a). Judge Brinkema also held that using conditional language (“This product may be covered by a U.S. patent”) also can constitute a false marking.

See full legal update for more important information.