False Marking - Patented Articles, and Associated Advertising, Brochures and Websites

Author:Mr Bill McFarlane
Profession:Madderns Patent & Trade Mark Attorneys

Do you know why you mark your patented articles and associated advertising, brochures and web sites with "PATENT 1234567", "PATENT", or "PAT PEND"? There may be a number of reasons, but the primary reason will be to increase the likelihood that infringers will be liable from the earliest infringement and not just for their infringing activities after the date upon which they are advised in writing of the existence of the relevant patent. However, do any of your articles etc bear those markings even though the relevant patent or patent application is no longer in force or pending? Both in Australia and in other countries such as the United States, this is an offence under the relevant patent laws.

As mentioned recently by a US court (The Forest Group v Bon Tool Company; Appeal no 2009-1004 Fed Cir Dec 28, 2009), there are good reasons for why this type of action is not only illegal but is also against the public good. In particular, it was stated by the Court that "potential competitors may be dissuaded from entering the market [and] false marks may also deter scientific research when an inventor sees a mark and decides to forego continued research to avoid possible infringement".

In Australia, a person falsely representing that an article sold is patented in Australia, or is the subject of a patent application, will be liable for a penalty of $6000. In the United States, a person must similarly not "falsely mark" an article, but in that country, each and every product that is falsely marked is liable to the applicable penalty. Thus, while an offender "shall not be fined more than...

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