We have all purchased a product or device stamped with a patent marking such as “U.S. Patent No. _____”.  Indeed, the patent statute at 35 U.S.C. § 287 requires patented articles to be properly marked.

Patent markings have three main purposes: (1) to avoid innocent infringement, (2) to encourage a patentee to give notice to the public that the article is patented, and (3) to allow the public to determine whether an article is patented.

Generally, if a patentee fails to mark a patented article, the patentee may not recover damages from an infringing party, even if patentee is successful in proving infringement.  On the other side of the coin, a person who falsely marks their non-patented goods with the word “Patent” or with a patent number may find themselves paying a hefty price.

Although the law only imposes a $500 penalty (35 U.S.C. § 287) for falsely marking goods as patented, the Circuit Court in The Forest Group, Inc. v. Bon Tool Company, recently interpreted the statute to be applied on a per article basis, not as a single fine. Thus, if 25,000  falsely marked articles were sold in the U.S., the potential fine could exceed $12 million.  To what extent the penalty applies to products marked with an expired patent is now before the court.

Marking issues can be tricky, particularly if the patent claims both a method or process and an article. If there is any doubt regarding whether a product should be marked with a patent number, it is wise to consult an attorney to minimize potential liability.

— Deborah Logan, Esq.