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.