The False Marking Statute, 35 U.S.C. § 292, Imposes Penalties Based on a Per Article Basis

Forest Group, Inc. v. Bon Tool Co., No. 2009-1044 (Fed. Cir. Dec. 28, 2009)

Holding:

The false marking statute, 35 U.S.C. § 292, imposes penalties based on a per article basis, not each decision to mark. Slip op. at 14.

Relevant Facts:

The patentee marked products with a patent number after knowing that the products were not covered by the patent number based on the summary judgment of noninfringement in a related case. Slip op. at 5. The district court fined the patentee $500 for a single offense of false marking based on one decision to mark. Id. The Federal Circuit vacated this ruling and remanded for further proceedings. Id.

Comments:

The Federal Circuit clarified that “the false marking statute explicitly permits qui tam actions” and Congress allowed the members of the public to help control false marking by permitting them to sue on behalf of the government. Slip op. at 13.

Section 292(b) provides that “[a]ny person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.” 35 U.S.C. § 292(b).

The Federal Circuit also notes that although the statute provides a fine of up to $500 for every such offense, the penalties can be a fraction of a penny per article for inexpensive mass-produced articles. Slip op. at 13.