A recent trend in patent litigation is the so-called “false marking” lawsuit. In fact, lawsuits are being filed daily accusing well-known retailers of violating the false marking statute. Exposure for defendants in these lawsuits goes beyond the cost of defense. If a company violates the false marking statute, courts are authorized to assess significant monetary penalties.

What is “false marking?”

False marking occurs when the word “patent” or a patent number is used on an article in combination with the intent to deceive the public regarding the patent rights associated with the article. False marking also occurs when, for the purpose of deceiving the public, the words “patent pending” or a similar designation is used on an article, but no patent application has been filed or the patent application associated with the article has been abandoned.

For example, imagine that your product is labeled “Covered under U.S. Patent No. 1,234,567.” A false marking suit would allege that your product does not actually practice the invention covered by U.S. Patent No. 1,234,567, that your company is aware of the falsity of the claim of protection, and that your company has the intent to deceive the public into believing that the product is patented.

What’s my exposure in a “false marking” lawsuit?

Anyone found guilty of false marking is subject to a fine of up to $500 per offense. An “offense” occurs with each falsely stamped article! By way of example, if a patent owner produced one million products that were improperly marked, the fine could amount to $500 million. In addition, any member of the public can bring a false marking claim, not just your competitors.

Don’t think this could affect your business?

In just the last week, one individual filed false marking suits against 20 different companies in the Northern District of Illinois. The companies sued included such diverse and unrelated companies as Pfizer, Inc., Blistex, Inc., Oreck Corporation, Fiskars Brands, Inc., 3M Company, Irwin Industrial Tool Company, and Monster Cable Products, Inc. The products involved are equally diverse.

We can help.

If you produce a product and you label either with “patent pending” or with the number of an issued patent, the Intellectual Property Litigation group and the Science and Technology group at Polsinelli Shughart can help you to evaluate your packaging, products, and advertising, and evaluate whether they are properly marked with patents that are not expired, and patents that actually cover the product. In addition, the intellectual property lawyers at Polsinelli Shughart can review the products, packaging and advertising of your major competitors to analyze whether they could be misleading the public and engaging in unfair competition by falsely marking their products.

For More Information

If you would like more information on this topic, please contact the following Polsinelli Shughart attorneys:

• Keith Grady at kgrady@polsinelli.com or (314) 552-6883
• Patrick Woolley at pwoolley@polsinelli.com or (816) 360-4280
• Kevin Sweeney at krsweeney@polsinelli.com or (816) 572-4638
• Andrew Hoyne at ahoyne@polsinelli.com or (314) 552-6876

About Polsinelli Shughart PC

With more than 470 attorneys, Polsinelli Shughart PC is a national law firm that is a recognized leader in the areas of business litigation, financial services, bankruptcy, real estate, business law, labor and employment, construction, life sciences and health care. Serving corporate, institutional and individual clients regionally, nationally and worldwide, Polsinelli Shughart is known for successfully applying forward-thinking strategies for both straightforward and complex legal matters. The firm can be found online at www.polsinelli.com.