Last Gasp for False Patent Marking Cases? The Public Patent Foundation Challenges the Constitutionality of the America Invents Act

Guest Commentary

Brian H. Pandya, Wiley Rein LLP*

Few cases drew more ire from the business community than patent false marking cases.  Filed as qui tam actions and purporting to be acting on behalf of the general public, plaintiffs sought to collect statutory damages (shared with the government) of up to $500 per unit sold of products that were marked with numbers of expired patents or patents that did not cover the products.  In practice, most cases settled with the defendant making a nuisance value payment to the plaintiff.  

On September 16, 2011, President Obama signed into law the America Invents Act.  Among its many provisions, the Act amended 35 U.S.C. § 292, which pertained to patent false marking, to (a) permit only the United States government to collect statutory damages for false marking, (b) limit the damages private plaintiffs can collect to actual damages from competitive injuries caused by the alleged patent false marking, and (c) eliminate any causes of action based on marking products with expired patents.  These provisions were made retroactive to any pending false marking cases.  As a result, the Act effectively extinguished most pending cases.  However, at least one plaintiff is not going down without a fight.  Continue reading “Last Gasp for False Patent Marking Cases? The Public Patent Foundation Challenges the Constitutionality of the America Invents Act”