A recent order by a U.S. Court demonstrates that U.S. law on false marking has more possible pitfalls than previously thought. The case highlights that products sold in the U.S. that are marked with a foreign patent number that does not correspond to any existing patent may be subject to a false marking claim.
In FURminator, Inc. v. Sergeant’s Pet Care Products, Inc., et al., the defendant was alleged to have violated the U.S. false marking law since the tool was marked with "Patent No. 200620072629.8", which is not a U.S. patent or application number, but instead is the number of a Chinese application that has since matured into a Chinese patent having a different number. The tool was not marked with a U.S. patent number. Further, the defendant admitted that it did not own the Chinese application that was marked on the tool. At a preliminary stage in the case, the Court has ruled that there is a serious issue to be adjudicated.
The case raises several questions. Since “Chinese” or “CN” did not appear ahead of the number, would members of the public incorrectly interpret the number as being a U.S. patent number? Even if the tool was marked with “Chinese Patent Application No. 200620072629.8”, or something similar, would that avoid a charge of false marking if the Chinese application was not owned by the defendant? Moreover, if the correct Chinese patent number was marked on the product, would the Court investigate to determine if the foreign patent was in force, and interpret the foreign patent to establish whether the product sold in the U.S. is actually covered by the foreign patent?
While the facts are unique, this is not the first case to consider foreign patent numbers and false marking. In the recent spate of false marking litigation, other decisions have held that the false marking law prohibits the marking of articles that are not subject to either domestic or foreign patent protection, and that there is no exemption for falsely marking an article with a foreign patent. Although a foreign patent may have no effect in the United States, affixing the number of an expired (or non-existent) foreign patent may be deceiving in that it conveys to the public that a product is patented.
For manufacturers who sell products into the United States, the FURminator case further emphasizes the importance of carefully and continuously reviewing their products and packaging to ensure that patent markings only include valid, non-expired patent numbers, whether foreign or U.S., that cover the product.