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 However, do any of your articles etc bear those markings even though the relevant patent or patent application is no longer in force or pending?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 million.
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 sued.
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.
