If your company owns a patent or a patent application that is about to issue to patent, it is worthwhile noting two recent cases from the U.S. District Court relating to the "false marking" of an article or process (Pequignot v. Solo Cup Co.1:07-CV-00897 (E.D. Va) and Pequignot v. Gillette 1:08-CV-00049 (E.D. Va)).

In some jurisdictions, including the U.S., a patentee may be disentitled from recovering damages from an infringer if the patentee has not provided proper notice that its articles are patented. Because marking a product (or its packaging) is considered adequate and constructive notice by the U.S. courts, it has become a common practice in the software industry to mark software and its related packaging. However, it now appears that this common marking practice may become a liability to patentees if any of the markings turn out to be "false".

Statutory false marking, under 35 U.S.C. 292, is the act of marking an article or product to suggest patent protection with an intent to deceive the public when, in fact, no such patent protection exists. Any person may bring a claim alleging false marking, and the patentee may be fined up to $500 per offence. Significantly, this fine would apply per software copy, or per marked box or CD–ROM etc. which could literally mean fines in the millions of dollars for large software companies.

Findings in the cases above suggest that the following actions may constitute statutory false marking:

  • Marking an article with a patent number that does not exist;
  • Marking "patent pending" on an article when an application is not actually pending (e.g. no application has been filed, an application has been rejected or if the patent has proceeded to issue);
  • Marking an article with an expired patent number;
  • Marking an article with a patent that does not actually cover the article;
  • Marking an article with multiple patent numbers, only some of which cover the article; and,
  • Marking an article with conditional language, such as the phrase "This product may be covered by a U.S. Patent."  

To protect against any potential false marking claims, all patent markings currently used on all products (and packaging) should be reviewed. Any "risky" or questionable markings should be removed. Also, a process should be adopted to ensure that each product is only marked with a valid, non-expired patent number that covers the product. In addition, any product marked with multiple patent numbers should be checked to ensure it is in fact covered by each listed patent.

Each step in this decision-making process should be documented, along with reasons for including each patent number in a marking. Evidence of reasoning may be used to show a lack of "intent to deceive" should false marking be alleged. Doing so can ensure that that benefits of patent marking are achieved while reducing the risk of improper marking.