In 2005, the United States Court of Appeals for the Federal Circuit rendered a decision on an “issue of first impression” interpreting a one hundred sixty-three year old provision of the United States Code - the “false marking” statute embodied in 35 U.S.C. § 292. It is false marking to mark as patented an unpatented article if done with the intent to deceive the public and, as such, is a fineable offense. The false marking statute remains one of only a handful of qui tam actions left intact from a rich history of varied incentives provided by the government for private enforcement. Enacted to protect patentees and viewed as a blend of public and private resources, the false marking statute has failed to work as intended. This failure is due to the interpretation of the statute given by the courts, eviscerating the penal nature and leaving us with an interpretation that is both false and flawed. Unduly emphasizing the fact that the false marking statute requires neither privity nor injury on the part of the party bringing suit, the courts’ interpretation ignores the culpability of the party who has falsely marked its innovation - harming both the patent system and the public. A party who falsely marks its innovation as patented, and does so with objective recklessness, should be presumed to have done so with the intent to deceive the public, and the burden should rest on the marker to prove that it lacked such intent. Furthermore, the penalty should reflect the culpability of the marking party, taking into account various mitigating factors, including whether the public was actually deceived, the materiality of the marking, and the harm to competitors caused by the marking. Only then can the false marking statute ring true as the effective and economically efficient vehicle it was designed to be.
Elizabeth I. Winston, The Flawed Nature of the False Marking Statute, 77 TENN. L. REV. 111 (2009).