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January 18, 2011


This is a sick joke.

$500 for compensation in the aggragate. That woould not even cover the costs of filing the complaint.

Why not do the intellectually honest thing and simply strike this part of the statute instead of this mockery?

"Strengthen current law" - ??? I was not aware that there was a law here being strengthened - the only ones benefitting from this are those that are illegally marking.

I wonder if we should likewise "strengthen" patent law by removing the BENEFIT of marking, or otherwise limiting that benefit to a net of $250.00.

What justification exists for a lopsided system?

A pity to throw out the baby with the bathwater - among the several hundred current false-marking defendants, it's possible that one really *is* a false-marker - but the false-marking trolls have driven it to this point. Plus I'm not convinced that even when the false marking is done deliberately, i.e. with intent to deceive, in the words of the statute as presently worded, that it really has a deterrent effect on competitors. If it's an old patent, a patent attorney can tell in two seconds that the thing lapsed years ago and isn't going to charge more than $500 for providing that information (and in many cases won't charge anything if he simply verifies this in a phone call); if it's a patent that might be subject to term extension, then it's probably a drug patent, in which case the copyist is a generic drug company that employs a boatload of attorneys for ANDA litigation, and therefore isn't prejudiced by the improper marking.

Rather than eviscerate 292, a creative approach would have been to only amend part (b) to specify that a false marking plaintff who loses shall be liable for triple the defendant's attorney's fees, with no discretion given to the court in such a case. I suspect that adoption of such an amendment would result in nearly all the pending false marking suits being dismissed within about five minutes of adoption.


patenting aids medicine.

Wouldn't all this foolishness be avoided by giving the phrase "for the purpose of deceiving the public" the meaning that evidence of mens rea is required? It seems the current interpretation jumps over the intent prong and concludes that if the public is deceived (and if the mark is "false" that is presumed), then there is no further need to determine whether the patentee has the required intent to deceive the public.

This treatment parallels how the court has handled inequitable conduct, which in many instances amounts to a question of whether the patentee is at an advantage if the Office did not consider the art (which if the art is material is presumed) and then intent inferred from the advantage.

Maybe Therasense will solve the IC issue; rather than twisting the false marking statute into knots it might make sense to reconsider how the present statute has been interpreted.


I disagree with your assumption of "It seems the current interpretation..."

I think the actual cases speak very differently. In Solo Cup, for example, the intent prong was crucial to the decision.

I think that presuming the intent prong to be nonexistent is a ploy by those whipping up a frenzy about this law in order to destroy this law. It is the fire for the smokescreen.

To me, Latta shows his ignorance by swallowing the hype, by simply not understanding what the law actually is. It makes me wonder how badly is he butchering other laws.

Latta wants to move back, not as he says to pre-Forest Group (Forest Group actually - and merely - applies the law as changed from 1952), but back to 1902. Yet instead of the simple move of actually re-instating that earlier language (which might take some critical thinking for the justification) he chooses to add and mangle the law.

Add to this the evidence of attempted introduction of competitive injury (which already is covered under different sections of the law and) and the indications of lack of understanding of this particular law is proven.

This shakes my trust in those making law for us.

Kevin, proof of intent to is still there - a lack of intent to deceive was what saved Solo Cup. More importantly, one of the arguments now before the CAFC (in BP Lubricants) is that in order to *plead* false marking, the heightened pleading requirements of Fed. R. Civ. P. 9(b) should apply with regard to the intent to deceive component. This would kill many false marking suits, most of which simply assert in the complaint that the defendant is a large sophisticated company (possibly with a large patent portfolio and/or licensing program) and therefore should have known better. But until the CAFC says that the heightened pleading requirements apply, many smaller companies will be subjected to these suits, and for them it simply doesn't pay to fight - settling is cheaper even if the suit is completely baseless. I wrote about this a bit in a blog post last week - http://www.iliplaw.com/2011/01/a-scout-is-trustworthy-loyaland-a-false-marker.html#tp.

While I would likely side with Latta and Issa in regard to the "competitive injury" requirement, I don't agree with Latta's limitation of damages to $500. Such a fine would serve as almost no deterrent to a potential violator of the false marking statute. False marking is to be taken seriously, as it could feasibly serve to hinder innovation. Though obviously some of the damage awards have gotten out of control, ultimately it may be better to simply allow a court discretion to limit such awards to reasonable amounts than to create a ceiling of a paltry $500.

"ultimately it may be better to simply allow a court discretion to limit such awards to reasonable amounts"

Patent litigation,

This is the current state of the law, as the penalty per transaction is UP TO $500 per event and the judge has the discretion to set the penalty in fractions of a penny.

If we can clear the smoke(screen), there simply is no need to change this law.

The 1952 Congress, as a whole, decided that false marking was a societal evil that undermined the integrity of our patent system, which system conceives of limited monopoly in return for inventive disclosure. So serious was the problem that they changed the earlier statute's $100 minimum fine per offense to one that had a $500 maximum fine per article.

Apparently, Congressman Darrell Issa believes that Government by way of the expenditure of taxpayer dollars is the better way to address that societal evil than by having private individuals do the job for the Government for free.

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