Update on Patent Strategy

Courtesy of Brooks BrothersSince when are bow ties a patent issue? Since clothier Brooks Brothers was sued for a false-marking claim, related to the long-expired patent for the “Adjustolox” mechanism on their bow ties. Since the patents have expired but are still marked on the product, the company is technically open to a false-marking claim, and the appeals court in the U.S. recently ruled in Stauffer v. Brooks Brothers, Inc., No. 2009-1428, -1430, -1453 (Fed. Cir. Aug. 31, 2010) , that virtually anyone has standing to bring a lawsuit for false marking claims.

In our earlier post (Patent Marking: Update for Canadian Patent Owners), which addressed the Forest Group decision (Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009)),we noted that false-marking claims are, in the US, one of many strategies being used by competitors.  We also note that earlier this year, in the US decision in Pequignot v. Solo Cup (Federal Circuit Court of Appeals, June 10, 2010), the appeals court also decided that knowingly marking a product with expired patents creates a rebuttable presumption of an intent to deceive the public. In the Solo Cup case, the company was successful in rebutting the presumption by gathering evidence of its decision-making process, and convincing the court that its intent was to minimize manufacturing costs, not to deceive the public.

From a Canadian patent case, here’s another patent strategy: in one of the rare cases considering a patent infringement court case versus a patent re-examination before the Canadian Intellectual Property Office (CIPO), the Federal Court recently “froze” the re-examination proceedings, until the outcome of the patent infringement trial. In Prenbec Equipment Inc v Timberblade Inc. 2010 FC 23, the court decided that the nature of the evidence, and the ability to cross-examine witnesses, meant that the trial was the better venue to decide the issues. This is an important consideration in assessing tactics in the midst of patent litigation.

Calgary – 18:00 MT


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