FALSE MARKING IN PATENT MATTERS Using false

FALSE MARKING IN PATENT MATTERS
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DAMIEN CALVET
LEGER ROBIC RICHARD, L.L.P.
LAWYERS, PATENT AND TRADE-MARKS AGENTS
Using false markings, such as “breveté” or “patented” on a commercialized product
is a marketing tactic that can lead to undesirable outcomes.
This article presents the risks incurred, in the United States as well as in Canada,
when using false markings on a product that was not, or no longer is, patented.
With regard to marking a product as “patented” or ”patent pending”, the following
three (3) situations may exist:
1)
the product is well covered by a valid patent in the country where
the marked product is commercialized (or is under a pending
application), in which case the marking is completely legitimate;
2)
the product was never covered by a patent (or an application), and
the marking “patented” is considered a false representation, in
other words an offence; or
3)
the product was protected by patent but no longer is, because the
given patent has since expired; in this particular case, the situation
is not as clear.
In Canada
Section 75 c) of the Patent Act (C.R.S 1985, ch. P-4, s.75) stipulates that “every
person who with intent to deceive the public offers for sale as patented in Canada
any article not patented in Canada, is guilty of an indictable offence and liable to a
fine not exceeding two hundred dollars or to imprisonment for a term not exceeding
three months or to both.” This section does not specifically mention marking, but
opens the door for a Canadian court to interpret it such that it could, in a litigation,
impose a fine of up to two hundred dollars for each product sold as falsely patented.
If the given product is sold in thousands of copies, the total amount of the fine could
be significant.
© CIPS, 2009.
*
With LEGER ROBIC RICHARD, LLP. a multidisciplinary firm of Lawyers, and Patent and Trade-mark
Agents. Published in the Summer 2009 Newsletter of the firm (Vol. 13, No. 2). Publication 068.107E
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In the United States
In the United States, the Act is more explicit than in Canada and stipulates that
anyone who falsely marks a product with the word “patent”, or any equivalent,
despite the fact that no patent has been granted for such product, runs the risk of a
maximum fine of five hundred dollars for each offence committed (35 U.S.C 292
“False marking”). In a recent case (Pequignot v. Solo Cup Co., 540 F.Supp. 2d 649
(E.D. Va. 2008)), the Federal District Court ruled that section 35 U.S.C. 292 applies
even once the patent has expired. In this case, coffee cups were sold in thousands
of copies and the plaintiff is claiming damages in the range of 100 billion dollars,
based on the maximum fine of five hundred dollars per sold item. We are still waiting
for a ruling on the merits of the claim but, in the cited ruling, the court rejected a
preliminary motion for the dismissal of the claim filed by the defendants on the
grounds that section 35 U.S.C. 292 did not apply to their case.
In conclusion, it is important to remember that, even though the marking “patented”
can seem alluring, this designation is reserved in certain countries to genuine
holders of this privilege. It is therefore advisable to always ensure that a product’s
markings conform to the reality of the situation, which also means performing
periodic reviews so that, once a patent has expired or an application has been
abandoned, the marking is taken off the commercialized products in question
ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué depuis 1892 à
la protection et à la valorisation de la propriété intellectuelle dans tous les domaines: brevets, dessins
industriels et modèles utilitaires; marques de commerce, marques de certification et appellations
d'origine; droits d'auteur, propriété littéraire et artistique, droits voisins et de l'artiste interprète;
informatique, logiciels et circuits intégrés; biotechnologies, pharmaceutiques et obtentions végétales;
secrets de commerce, know-howet concurrence; licences, franchises et transferts de technologies;
commerce électronique, distribution et droit des affaires; marquage, publicité et étiquetage; poursuite,
litige et arbitrage; vérification diligente et audit. ROBIC, a group of lawyers and of patent and
trademark agents dedicated since 1892 to the protection and the valorization of all fields of intellectual
property: patents, industrial designs and utility patents; trademarks, certification marks and indications
of origin; copyright and entertainment law, artists and performers, neighbouring rights; computer,
software and integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets,
know-how, competition and anti-trust; licensing, franchising and technology transfers; e-commerce,
distribution and business law; marketing, publicity and labelling; prosecution litigation and arbitration;
due diligence.
COPYRIGHTER
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