Do you know why you mark your patented articles and associated
advertising, brochures and web sites with "PATENT
1234567", "PATENT", or "PAT PEND"? There
may be a number of reasons, but the primary reason will be to
increase the likelihood that infringers will be liable from the
earliest infringement and not just for their infringing activities
after the date upon which they are advised in writing of the
existence of the relevant patent. However, do any of your articles
etc bear those markings even though the relevant patent or patent
application is no longer in force or pending? Both in Australia and
in other countries such as the United States, this is an offence
under the relevant patent laws.
As mentioned recently by a US court (The Forest Group v Bon
Tool Company; Appeal no 2009-1004 Fed Cir Dec 28, 2009), there
are good reasons for why this type of action is not only illegal
but is also against the public good. In particular, it was stated
by the Court that "potential competitors may be dissuaded from
entering the market [and] false marks may also deter scientific
research when an inventor sees a mark and decides to forego
continued research to avoid possible infringement".
In Australia, a person falsely representing that an article sold
is patented in Australia, or is the subject of a patent
application, will be liable for a penalty of $6000. In the United
States, a person must similarly not "falsely mark" an
article, but in that country, each and every product that is
falsely marked is liable to the applicable penalty. Thus, while an
offender "shall not be fined more than $500 for every such
offence", if, for example, 10,000 products have been falsely
marked, the offender could receive a penalty fine of up to $5
A further, interesting aspect of United States law relating to
false marking, is that "any person" may sue on behalf of
the government, and their reward is half of the amount of the court
imposed fine! It has been reported that in the first few months of
2010, there have been more than 100 false marking suits commenced
in the United States and almost none of them were brought by
parties who would be classed as competitors to the company
When was the last time you checked the patent markings on your
articles etc? If you have any questions about this aspect of your
business, then please contact us.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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