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Properly Marking Patented Products

Under the new patent law patentees can much more easily comply with the marking and false marking provisions of the patent statute. For instance, rather than marking patented products with the traditional "Pat. No. ..." the America Invents Act (AIA) now allows patentees to use "virtual markings" as notice of their patent rights. Virtual marking is a practice whereby patentees may mark a product with a website address where others may look up the patent(s) covering the product. This of course makes it much easier to keep a patent notice up to date because newly issued patents may be added, and expired patents may be removed, without having to alter the product or product packaging. The AIA also does away with qui tam actions brought by the general public, and permits only the government and persons actually harmed by false marking to bring actions for false marking.

These new provisions essentially codify the rule set out by the Federal Circuit in their 2010 opinion in Pequignot v. Solo Cup Co.1 which shut down a short-lived cottage industry in false marking suits. Briefly, Solo Cup manufactures plastic cups and cup lids for coffee and cold drinks sold in stores like StarbucksĀ®. They make their lids with thermoforming molds which at one time included embossed patent numbers so that every lid included a patent notice. This is fine except that the molds outlasted their patents, so eventually Solo Cup unintentionally slipped into incorrectly marking their products. To make matters worse Mr. Pequignot, a patent attorney, was evidently deeply offended to find that his coffee cup was improperly marked, and brought suit against Solo Cup claiming that he was owed $500... for each falsely marked lid... which could include thousands if not millions of lids. One can see how damages could add up quickly. Luckily for Solo Cup, they lacked the requisite intent to deceive and were ultimately not found liable.

To bring this tale full circle, the AIA has set down in black letter law that such trolling by individuals who suffered no actual harm is not permissible, and also that patentees need not fear that a once properly marked product may become a violation if it sits in a warehouse too long before being sold. By itself, marking a product with an expired patent does not rise to the level of "false marking" under the law. The reader is cautioned however, that Mr. Pequignot's method of calculating damages is valid according the Federal Circuit in Forest Group, Inc. v. Bon Tool Co.2 Falsely marking one's products with the intent to deceive the public into thinking that your product is covered by a live patent is punishable by a very hefty fine of up to $500 per falsely marked article. With the threat of such enormous penalties, patentees would be well advised to reassess their product marking practices to avoid even the appearance of impropriety.

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