Why not skip the cost and uncertainty of the patent process and simply mark your product as patented or as ‘patent pending’ when you have no patent or no patent pending?

The patent statute at 35 U.S.C. 292 provides that falsely labeling something as ‘patented’ or ‘patent pending’ is subject to a fine of up to $500.00 “for every such offense” provided the false marking was performed “for the purpose of deceiving the public.” Any citizen can act on behalf of the Federal government to enforce this right and split any proceeds with the government.

Solo Cup Co. makes disposable dinnerware, including paper and plastic drinking cups.  At one time, Solo Cup held patents and incorporated patent notices into the molds that it uses to manufacture its products. The patent notices still appear on the products, even though the patents expired long ago have not been in effect for many years.

A private citizen sued Solo Cup alleging false marking.  As soon as Solo Cup learned of the false marking, it put in place a plan to retire the molds bearing the patent notices as the molds become worn and to replace them with molds lacking patent notices.  The matter was scheduled for a jury trial beginning on July 27, 2009.  On July 2, the U.S. District Judge dismissed the action against Solo Cup.  The judge was persuaded that Solo Cup’s inclusion of the false patent notice was not “with the intent to deceive the public.”

This case leaves questions unanswered.  What if Solo Cup had been less innocent and actually had intended to deceive the public?  For example, what if Solo Cup simply falsified the patent notices and made up fake patent numbers?  Would Solo Cup have been liable for $500.00 for each of the millions of falsely-marked paper cups that it has manufactured?  The Court did not reach this question.

The bottom line is that false marking can result in substantial fines and that any private citizen can sue to collect those fines.  Marking a product as patented based on an expired patent can result in a false marking claim.

–Robert J. Yarbrough, Esq.