Patent Marking: Update for Canadian Patent Owners

Do you have a patent in the US or are you a licensee of a US patent? Are your products marked correctly?

Canadian patent owners should review patent marking requirements in the US, in light of the recent Forest Group decision (Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009)).  This decision has reinterpreted the false marking provisions of U.S. patent law to expand the fines that can be imposed on patent owners and their licensees.  If an article is falsely marked with an incorrect patent number, the fine can be up to $500 for each falsely marked article. An article is falsely marked, for example, if the patent number is incorrect, or if there is a false suggestion that a patent is issued or pending, or a false claim that a particular issued patent covers the product.  

The U.S. law permits anyone to sue for the penalty and split any award with the federal government, so this has become another strategic tool in the marketplace.  Since the December 2009 decision, competitors have been scrutinizing (and suing) each other to determine if there is any basis for a false-marking suit.  

Canadian patent owners, licensees and manufacturers are advised to obtain advice to review their internal patent-marking policies, and to review the terms of patent license agreements to address patent-marking obligations.

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