Patent False Marking is statutorily prohibited under 35 U.S.C. § 292.  Section 292 encompasses two elements: (1) marking an unpatented article; and (2) an intent to deceive the public. 

The U.S. Court of Appeals for the Federal Circuit issued a decision, in 2010, that provides guidance in determining whether the second element of Section 292 is satisfied.  The Federal Circuit found that the bar for proving deceptive intent is particularly high, given that the false marking statute is a criminal one, despite being punishable only with a civil fine.  The Court held that mere knowledge that a marking is false is insufficient to prove intent, but rather requires a fact-intensive inquiry regarding a party’s motivation for patent marking and a determination of a conscious desire to deceive.  In Pequignot v. Solo Cup Co., Pequignot brought a Patent False Marking suit against Solo Cup Company for falsely marking articles with expired patent numbers.  When Solo Cup Company became aware that the patents were expired, it began marking its products with “may be covered” and the expired patent numbers.  The combination of a false statement with knowledge of the statement’s falsity creates a presumption of deceptive intent, but that presumption was rebuttable.  With regard to expired patents, the presumption is weaker.  Because the statute requires that a party that falsely marks an article act for the purpose of deceiving the public, a purposeful deceit, rather than simply knowledge that a statement is false, is required.  A party can rebut the presumption of deceptive intent in Patent False Marking suits by proving that it did not consciously desire to deceive the public.  Solo Cup Company met this burden by providing evidence that it never intended to deceive the public and was relying in good faith on the advice of counsel.

This decision establishes that even if a party has knowledge of a falsely marked article, it can escape liability for Patent False Marking if it can prove that its motives were not to deceive the public.  The Federal Circuit also offered some examples as to what could successfully rebut the deceptive intent presumption including consultation with counsel to ensure that articles are not falsely marked.

If you are interested in additional information on the topic of Patent False Marking, or if you have any questions, please contact a K&K attorney. 

K&K offers an array of services in the areas of intellectual property including patents, trademarks, copyrights, trade secrets as well as intellectual property litigation and enforcement.  Further information on these and other services is available at www.kk-llp.com.