Patent marking, bounty hunting?

Writing on the Intellectual Property Watch weblog, Foley & Lardner special counsel Phillip Articola ("Forest Group Decision Has Led To Great Rise In Patent Marking Lawsuits") discusses the US decision in Forest Group, Inc. v Bon Tool Company et al., ___ F.3d ___ (December 28, 2009), in which the Court of Appeals for the Federal Circuit (CAFC) made it more viable for entities to sue patent owners for products that have been improperly marked with the term “patent” or any word or number connoting that the products are patented (e.g., patent number), since those entities can obtain one-half of the statutory penalty payable for making such a false patent marking.

The legislative provision which facilitates this bounty-hunting is 35 U.S.C. § 292, which imposes a civil penalty for falsely marking a product as patented. As Mr Articola explains, under § 292(a), false marking occurs when one intentionally marks or affixes or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing the same. This section also considers false marking to be when one uses “patent pending” or “patent applied for,” for the purpose of deceiving the public, when in fact no patent application has been filed or if a patent application has been filed but is no longer pending. A $500 penal is incurred in respect of each offence and, under § 292(b), “Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States”. The author concludes:

"Based on the Forest Group decision, § 292 will not only lead to a rise in patent marking lawsuits, but it will also likely be the case that patent marking suits will be included more frequently as a counterclaim in patent infringement lawsuits brought by patent owners against accused infringers. Of course, if the S.515 bill [US patent reform] in its current state eventually becomes law, this will certainly affect the number of such lawsuits. ...".