The Federal Circuit’s ruling in The Forest Group, Inc. v. Bon Tool, Co., 590 F.3d 1295 (Fed. Cir. 2009), clarified that a successful plaintiff in a patent false marking case under 35 U.S.C. Section 292 may receive up to $500 per item bearing the false marking. While half of any monetary recovery is shared with the U.S. Government under the provisions of Section 292, depending upon product sales, a recovery can be lucrative, which is one factor motivating third parties to file suits. Presently, both houses of Congress are considering amendments to Section 292 that may limit suits to competitors. Until action is taken, however, false marking cases will continue to be filed and practitioners need to be prepared to counsel their clients when claims occur and on how best to avoid claims.
The Genesis of False Marking Claims
The basis for a false marking claim arises from 35 U.S.C. § 292(a) and (b), which in pertinent part, provides:
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