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

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.