The Flawed Nature of the False Marking Statute

A new working paper by Professor Elizabeth Winston (Catholic U) discusses problems in court interpretations of the false marking statute 35 U.S.C. § 292. Professor Winston argues that false marks should be presumptively actionable:

“A party who falsely marks their innovation as patented should be presumed to have done so with the intent to deceive the public, and the burden should rest on the marker to prove that they lacked such intent. Furthermore, the penalty should reflect the culpability of the marking party, taking into account various mitigating factors, including whether the public was actually deceived, the materiality of the marking and the harm to competitors caused by the marking. Only then can the false marking statute ring true as the effective and economically efficient vehicle it was designed to be.”

The statute is receiving attention in the courts as well. PubPat has filed suit against Cumberland Packing (Sweet-n-low), McNeil-PPC (Tylenol), Iovate (Xenadrine), and Glaxosmithkline (CITRUCEL) for false marking. Attorney Matthew Pequignot has filed suit against at least Gillette, Arrow Fastener, and Solo Cup for false marking.

Read Professor Winston’s Draft Article

37 thoughts on “The Flawed Nature of the False Marking Statute

  1. Applying the Law as a function of “we ned money so it is going out.” is NEVER a good job.

  2. *********”It did raise a red flag, but it doesn’t suffice to quash it. The publication was by “others” thus the authorship is not identical.”*******

    If the paper had been published more than one year before the provisional application was filed, then you would have a 102(b) rejection, but that is not the case.

    Since it is a 102(a) rejection, filing a 132 declaration to show that the reference invention is not “by another” is perfectly acceptable. See 706.02(b) and 715.01(c)I

    A declaration by just the inventors or the assignee suffices. You do not need a declaration from the author of the paper who is not named in the applciation. See MPEP 715.04 I

    It is required that Declarations include the statement regarding willful false statements. See MPEP 715.04 II

    I know this set of circumstances is one to raise eyebrows. The proof is that people had to go to Court over it. It’s confusing at first, but you will wrap your head around it and move on.

    But I don’t think the “need for allowances” has anything to do with the result here. The result would have been the same regardless. If you had forced the Applicant to appeal it, you would have been doing a bad job.

    Bottom line, you did the right thing to allow it. Good job.

  3. The issue of whether presumed intent is appropriate changes given how the courts interpret the “for every such offense” in section 292: “Shall be fined not more than $500 for every such offense.” Some courts have declined to interpret “every such offense” as applying to every instance of mass production, instead looking for evidence of a deliberate choice to mark. If a company makes 4 or 5 deliberate choices to mark, the stakes are low and presumed intent may be reasonable. If a court however finds that damages accrue, for example, as fast as the printing press prints an advertisement, the stakes are extremely high and presumed intent seems less appropriate.

  4. It did raise a red flag, but it doesn’t suffice to quash it. The publication was by “others” thus the authorship is not identical.

  5. Six says:

    “The invention, in this case, was still undeniably described in a printed publication in this country before the fd thereof”

    This statement would be true even if the publication authorship was identical to the inventorship in the patent. That ought to raise a red flag that your analysis is off base.

  6. [Adding to David Jaglowski's note] Also, inequitable conduct death of the patent and a likely disciplinary action investigation by the PTO “Office of Enrollment and Discipline” against the involved attorneys or agents if either the applicants application filing declaration or any other declaration is found in any litigation on the patent to have been made falsely as to true inventorship of what is being claimed in the patent application.
    [Which is not necessarily the same as for the entire contents of a publication, and, as noted above, who's names go on a technical publication is often determined quite differently.]

  7. “One more question though, what happens as penalty if you lie under oath in the prosecution of your patent? All that happens is you lose the patent and maybe the patent fam right? Bogusly under punishing things like this. I can go to jail for stealing a candy bar, but ripping people off for millions by lying? Nah, not a big deal!”

    You’ve forgotten felony perjury, 18 USC 1001, and five years and/or $250,000. Every declaration you’ve seen should mention the possibility of fine, imprisonment, or both, as well as that statutory section concerning fraud and false statements. See 37 C.F.R. 1.68.

  8. Thanks David that’s why I allowed it already. However, my concern remains. My concern is based upon the fact that anyone who writes a paper on a subject could take the paper, doctor it up a bit, and submit it in a provisional sans one inventor, and simply swear it was all them, thus cutting the other guy out.

    Furthermore, a concern arises in that it doesn’t seem to me they really need to be swearing in the affidavit as to their own inventorship, that was done in the oath and I accept it. What they need to be doing is swearing that the authorship of the paper is different and/or that they invented prior to the publication date. Because 102a says:

    “the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or”

    The invention, in this case, was still undeniably described in a printed publication in this country before the fd thereof, and the applicant does not swear as to their date of invention, or even swear directly that they invented before the printed publication. They simply say that they invented, that the other guy didn’t, and that the other guy helped them put together the paper. That does not tell me when they invented. Perhaps they “invented” the day after he helped them put the paper together. Huh huh? Anyone seeing what I’m saying?

    It all seems rather fishy to me.

    Frankly it is kind of surprising that we allow copies of papers to be support as a spec, but I haven’t raised concern irl. What the bleep is the point in demanding a specification if they can just attach appendices of technical information and call it a day?

    “Anything more to be said?”

    I don’t think so max, if something fishy did go down, then I suppose they’ll get their patent invalidated.

    One more question though, what happens as penalty if you lie under oath in the prosecution of your patent? All that happens is you lose the patent and maybe the patent fam right? Bogusly under punishing things like this. I can go to jail for stealing a candy bar, but ripping people off for millions by lying? Nah, not a big deal!

    Yes broje. He provided the right kind of statement, I guess, to incorporate the whole thing.

    In any event, the affidavit appeases my primary, we ned money so it is going out.

  9. **********”One final fact. The only support from the provisional for the amended claims in the nonp is found in the appendix with the unfinished paper by ABC in the provisional.

    Is the application in condition for allowance? Should a rejection under 102(b) be made keeping in mind that the only support for the newly amended claims is from the paper by ABC?”********

    I need more information. Does the utility application contain a statement incorporating the disclosure of the provisional application by reference? If so, does it incorporate it in its entirety, or does it incorporate only certain parts of it disclosing certain details? Also, does it incorporate it for any purpose, or does the wording imply that it was incorporated for a specific purpose that would exclude it being used to provide support for the amended claims?

  10. Why have a marking statute? Presumed intent and automatic standing means anyone can pull a patentee who marks into court anywhere, anytime. I doubt that is what Congress intended.

  11. I too couldn’t see how the facts raise a substantial issue of patentability.

    It’s unremarkable and well-known, isn’t it, to name as authors of academic research papers individuals who didn’t invent the contribution to the art that was made when the Paper got published?

    So: 102(a) nobody knew or used the invention prior to its being made. 102(b) not one year prior, and 102(f) no discrepancy on inventorship.

    Anything more to be said?

  12. “Legal minds of my interwebs, I pose unto you a question. And humbly seek thine answer.”

    First part, 102(a): The inventors have filed an oath and a further declaration concerning inventorship. They’ve given a reasonable explanation and, in the absence of an admission to the contrary, you’re more or less done. MPEP 2137.01. Any remaining issue will be handled by an interference, a judicial order to correct inventorship, or the resultant loophole in the patent (‘infringers’ may take a license from the unlisted inventor and raise the license/inventorship issue as an affirmative defense).

    Second part, 102(b): Since there is support in the provisional, and the published article is not dated more than 1 year before the filing of the provisional, how do you propose to sustain the rejection? Divide out the appendix and declare that the provisional application doesn’t include it?

    You’re pussyfooting around a 102(a)/(f) rejection. Consider the standard and make it final or withdraw it. MPEP 2137 states

    “Where there is a published article identifying the authorship ( MPEP § 715.01(c)) or a patent identifying the inventorship ( MPEP § 715.01(a)) that discloses subject matter being claimed in an application undergoing examination, the designation of authorship or inventorship does not raise a presumption of inventorship with respect to the subject matter disclosed in the article or with respect to the subject matter disclosed but not claimed in the patent so as to justify a rejection under 35 U.S.C. 102(f). However, it is incumbent upon the inventors named in the application, in reply to an inquiry regarding the appropriate inventorship under subsection (f), or to rebut a rejection under 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter invented by the applicant rather than derived from the author or patentee notwithstanding the authorship of the article or the inventorship of the patent. In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982).”

    Thus, even if you think the declaration isn’t a “satisfactory showing,” you’re going to need more than just a name on a paper to survive the Board (“does not… justify a rejection…”). Given what you’re written, you don’t have it.

  13. I demand that Just an ordinary inventor(TM) stop false marking his comment alias. Otherwise, I shall be left with no recourse but to tattle to Professor Winston.

    The Public(TM) is being deceived!

  14. I too will be interested to read thoughtful answers about the position under the current US patent statute because, in Europe, I’m deprived of anything here to discuss. Just one observation though. Who screwed up? Was it the client, or was it the patent attorney who should have got on and done what was obviously intended (perhaps to get some protection outside the USA), namely, filed at the PTO before the Paper got published?

  15. Legal minds of my interwebs, I pose unto you a question. And humbly seek thine answer.

    Inventors A and B file a provisional patent application on 01/01/01. Included in the application is a spec, some claims, and an “appendix” which is the rough outline of a paper they are going to have published, and included on the paper is the authorship ABC (not only just A and B). One year later they file a non-prov on 12/31/01. Two years later the examiner finds the actual completed paper by ABC published in a journal which hit the floor on 08/01/00. He cites the paper by ABC as anticipatory to the claims under 102(a). The inventors reply with an affidavit to overcome the rejection under 102(a) stating that C was just a guy who helped them prepare the paper, he didn’t actually invent the subject matter.

    One final fact. The only support from the provisional for the amended claims in the nonp is found in the appendix with the unfinished paper by ABC in the provisional.

    Is the application in condition for allowance? Should a rejection under 102(b) be made keeping in mind that the only support for the newly amended claims is from the paper by ABC?

  16. ““Covered by U.S. Patent No. 7,536,817* until July 7, 2028 (if maintenance fee payments are made).””

    That’s fine, you could make it a bit smaller for small products where appropriate, and there would still be a need for similar legislation as we already have where people don’t want to use the new marking statute, or we could simply make the new way mandatory. Either way seems reasonable to me.

  17. Dear Mr. Six,

    How about this for notice:
    “Covered by U.S. Patent No. 7,536,817* until July 7, 2028 (if maintenance fee payments are made).”

    *A really neat invention – I wish it was mine.
    How is it possible it took so long to fix this problem?

    * * * * *

    “Yes – the 21st Century will be the American Century, and it will be the best Century yet!”
    So sayeth John McLaughlin this morning on TV.

    From Mr. McLaughlin’s lips to God’s ears.
    So sayeth Jaoi.

  18. How can there be “a mitigating factor” for a “legal presumption?” A presumption applies or not.
    There is not even a possibility of real mitigation here, because the damages here [more accurately, a criminal fine] are set by the statute. [Albiet long argued to be ambiguous as to whether that fine attaches to the product or to each produced or sold copy of the product.]

  19. Perhaps this is not done due to the Office confusion on interpreting Patent Term Adjustment – that “A” term and “B” term stuff seems to befuddle the Office.

  20. 3 million JAOI, and I work for you for a year.

    Besides, I’m pretty sure that one of ordinary skill in the legislative arts is capable of handling the minor details.

  21. Why don’t we simply allow them to mark items as covered by a patent “at one time”. So that way, whenever the patent expires, they’re no longer telling the consumer it is covered, but rather that it WAS covered, and is now available for them to make.

  22. The errors in the above case were inadvertent, the result of oversight, or caused by patent expirations. In those cases, there was no evidence of intent to deceive.

  23. “As a general proposition, there can be no violation of section 292, absent an evidentiary showing that the false marking or mismarking was “for the purpose of deceiving the public.”

    Arcadia Mach. & Tool Inc. v. Sturm, Ruger & Co. 229 USPQ 124 (Fed. Cir. 1986)

    How does one presume an evidentiary showing?

    The errors in the above case were inadvertent, the result of oversight, or caused by patent expirations. In those cases, there was evidence of intent to deceive.

  24. “What makes this academic proposal [and some of these new clientless lawyer-lucrative suits] even more peculiar than my above sarcasm suggested [in view of the very express intent requirement of this statute] is that most so-called “false markings” were NOT false when the marking was initiated!”

    Uh, that would be a mitigating factor, obviously.

    I think Professor Winston is on the right track. The devil is in the details, of course, but she’s right that leaving it to the consumer or competitor to prove intent renders the statute pretty much useless as an efficient tool for curbing abuse.

    Perhaps a one year grace period could be allowed to manufacturers to remove the marking step from the manufacturing process.

    And then there’s the question about warehoused items.

    All of this is a burden on the manufacturer, of course, who will pass the costs on to the consumer. Perhaps false patent marking isn’t deemed very important by most of the population unlike, say, the heart-rending horror of a teenager accidentally buying a record with a four letter word in the lyrics because it was not properly labeled.

  25. What makes this academic proposal [and some of these new clientless lawyer-lucrative suits] even more peculiar than my above sarcasm suggested [in view of the very express intent requirement of this statute] is that most so-called “false markings” were NOT false when the marking was initiated! I.e., They were quite true when the subject product manufacturing molds, dies or stamps were made with the patent numbers in them. Presumably by the time the patents expired there was simply no one left at that company who had ordered the marking, had reason to know that a patent on a marked product was expired, and thus had any reason to remember to order an expired patent number to be ground off from, or filled in on, a particular manufacturing mold or die for a particular product.

  26. Just the other day I trekked over to my local Best Buy. As I perused its inventory I came across a product that had a litany of patent numbers printed on its packaging. My reaction? “Wow! This is impressive! I have to have it because it must be good, what with all those numbers and all!”

    As a consumer I was duly impressed, but on reflection decided not to get it because I did not need another toaster oven.

    While I have not seen an academic study examining in minute detail the reaction of other consumers, I do have to wonder if my reaction represents to overwhelming norm?

  27. da Bod,

    Obviously a body without a brain – Mr. Morgan was panning the academic’s view of presumed intent (one must prove his innocence). You should be railing against the academic.

    To be fair to the academic, and to take both da Bod and Mr. Morgan to task, it is not a stretch that taking the purposeful action of marking your prodcut should indicate that you marked your product with intent and knowledge of how you marked your product. If you mismarked in error, it is not a great leap to suppose that you intended to mismark in error (even the case of marking in error due to a typo is covered in the academic’s details and the penalty is distinguished on that basis).

  28. Mr. Morgan – go back to Russia! Innocent until proven guilty here in the U-S-A

    U-S-A!
    U-S-A!
    U-S-A!
    U-S-A!
    U-S-A!

    Happy Fourth!

  29. How does on “mark an innovation”? Why “their” instead of “its” in the first line? Those first few misuses of language tell me that the article is probably not reliable and not worth reading.

  30. Accidents happen for a reason. If you allege someone for false marking to the product sold on the market, you’d better have full DD to prove that they DO have the intent, or your theory would not allow the case to stand.

  31. Perhaps this academic will extend this theory of presumed bad intent or mens re [rather than having to prove it], to revolutionize negligence and criminal law. For example, if someone accidentally runs into your car, by presuming intent to injure you, you could collect a great deal more money by turning the case automatically into a case of assault and battery. Or a murder case if anyone dies.

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