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Law Offices of David L. Hoffman
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"TURNING
NEW IDEAS, NAMES, PRODUCTS & COMPUTER PROGRAMS INTO POWERFUL
INTELLECTUAL PROPERTY"
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DON'T
GET CAUGHT IN A PATENT MISMARKING TROLL'S NET
Companies that get a patent love to mark their products
and advertising with "patented" or better yet, "U.S.
Patent No. 9,999,999." Patent attorneys encourage
patent marking, so the patent owner can sue for lost
profits in the event of infringement. It also has many other
benefits. But, what happens if you mark a product
improperly?
If the product or service is not actually patented (or if you say
"patent pending" and there is no application pending),
there is potential liability for "patent mismarking" under
35 USC §292. Often, when a patent expires (such as for lack of
maintenance fee payments or expiration of the patent term), the
patent owner does not realize that the patent has expired. If a
company leaves the patent number on its advertising materials, web
site, and/or product, past the expiration date,
the company can be subject to a patent mismarking suit.
In the past, patent mismarking suits were rare
because courts interpreted the statute's $500 per offense to
apply per product and/or per patent. In a recent case, an
offense was redefined as each and every sale of the product and/or
service. At $500 per offense, even low volume products
can add up to huge fines. The statute also provides for
attorneys' fees. Patent mismarking suits have dramatically
increased. There is pending legislation to help alleviate this
problem, but a lawsuit is still costly and disruptive to
business.
Sincerely,
David Hoffman
Law Offices of David L. Hoffman
28494 Westinghouse Place, Suite 204
Valencia, California 91355
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Tip of the Month
Periodically review your clients'
products, marketing, advertising, labeling, and other literature
which contains "patent pending" and/or patent number
marking for accuracy. Make sure when you do mark, mark
"patented" and include the applicable patent or patent
numbers. Consult with patent counsel as needed to determine
patent expiration dates and/or whether the product or service is
truly covered by the patent(s).
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