From Forest Group to the America Invents Act: False Patent Marking Comes Full Circle

25 Pages Posted: 19 Apr 2011 Last revised: 11 Mar 2013

Date Written: March 2, 2012

Abstract

Section 292 of the Patent Act forbids the false marking of unpatented or infringing articles with the type of marks usually used by patentees to provide public notice of their patented inventions. Prior to the recent enactment of patent reform, the statute provided a rare qui tam enforcement mechanism that allowed private individuals to enforce the criminal offense. But for much of its history, the law was rarely enforced. Then, in a 2009 decision, the Court of Appeals for the Federal Circuit increased the potential awards for those bringing enforcement actions, which resulted in a dramatic increase in the volume of false-marking claims. In response to the slew of new false-marking suits, Congress amended § 292 in 2011 as part of the Leahy–Smith America Invents Act. This Note reviews the impact of recent § 292 case law, analyzes the recent statutory amendments, and proposes guidelines for interpreting and enforcing the amended statute that will help to ensure it achieves its objective of curtailing false marking while minimizing the social costs of excessive litigation.

Keywords: patent, patents, false marking, section 292, false marking statute, forest, bon tool, patent marking, america invents act, leahy-smith, patent reform, virtual marking

JEL Classification: K00, K10, K20, K29, K30, K39, K11

Suggested Citation

Stephens, Nicholas William, From Forest Group to the America Invents Act: False Patent Marking Comes Full Circle (March 2, 2012). Iowa Law Review, Vol. 97, p. 1003, 2012, Available at SSRN: https://ssrn.com/abstract=1813422 or http://dx.doi.org/10.2139/ssrn.1813422

Nicholas William Stephens (Contact Author)

Iowa Law Review ( email )

Melrose and Byington
Iowa City, IA 52242
United States

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