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Make sure your patent marks are accurate or face the "patent marking trolls"

A recent U.S. Federal Circuit Court of Appeals decision (Forest Group, Inc. vs. Bon Tool Company) has resulted in a large number of lawsuits being filed by "patent marking trolls."


These are individuals who sue patent holders that have allegedly falsely marked their products as being covered by a patent or pending application.

In various countries around the world, it can be advantageous to mark one’s products to indicate that they are covered by a patent or application. These markings put competitors on notice and can lead to higher damage awards if a competitor infringes the patent anyway.

In the case of Forest Group, Inc. vs. Bon Tool Company, stilts (left) were found to be falsely marked.

However, patent marking can be a double-edged sword and, in the U.S., one edge of that sword could be a lot sharper than previously thought. Specifically, there is a U.S. statute (35 U.S.C. § 292) that allows anyone to bring a suit against someone who has falsely marked a product. The statute provides for a penalty of up to $500 per offense to be split between the plaintiff and the government.

Until the above-mentioned decision came down, it was not clear whether “per offense” referred to each marked article or each decision to mark a product line. The Court decided that “per offense” means “per article.” Under this interpretation, it is easy to see how the fine can add up to a large number.

This case serves as a reminder that the decision to mark a product should not be taken lightly. Indeed, it could be rather easy to end up being in a position that is at least arguably on the wrong side of this law.

Consider the situation where a product originally started out as being within the scope of a patent but is later updated in such a way that the patent no longer covers it, and the patent holder neglects to remove the markings. Similarly, failing to stop marking products once a patent expires or an application has been abandoned may also be problematic. A company in either of these situations may find itself the target of a patent marking troll.

It may be tempting to simply stop marking one’s products altogether. However, as discussed above, there can be significant benefits gained from marking products. The better approach is to, before marking a product, enlist the help of a qualified patent lawyer or agent and carefully analyze the product in light of the patent or patent application in question.

Alexander Anishchenko, B.A.Sc. (Elec. Eng.), MBA, J.D., is an associate lawyer with Bereskin & Parr LLP. He can be reached in Toronto at 416.364.7311 or aanishchenko@bereskinparr.com.

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