The patent marking statutes: § 287 and § 292
Two related patent marking statutes work together. Section 287(a) establishes the marking requirement: patent owners who make, sell, or import patented articles should mark them with the patent number (or 'patent' + number) to provide constructive notice to the public. Failure to mark limits the patent owner's damages to the period after actual notice. Section 292 is the companion provision that prohibits false marking — marking articles with patent numbers when the article is not covered by those patents, or marking as 'patent pending' when no application is pending, with intent to deceive. Together, these statutes create a marking framework that benefits the public by ensuring that patent information is accurate and available, and that competitors and the public are not misled about what is and is not protected by patent.
Forest Group v. Bon Tool: per-article penalties
Before Forest Group, Inc. v. Bon Tool Co. (Fed. Cir. 2009), there was uncertainty about whether § 292's $500 penalty applied per decision to mark (once for the entire product line) or per marked article. Forest Group resolved this: penalties are assessed per article. Each unit of an unmarked product bearing a false patent number is a separate violation potentially subject to up to $500. For manufacturers of millions of products, this created enormous potential liability and triggered an explosion of qui tam false marking lawsuits after Forest Group was decided. A plaintiff who proved a company had falsely marked one million articles could seek up to $500 million in penalties, with 50% going to the federal government and 50% to the plaintiff. The resulting litigation wave — hundreds of false marking lawsuits targeting companies for marking with expired patent numbers — prompted Congress to reform § 292 in the AIA.
AIA reform of § 292: competitive injury requirement
The America Invents Act (2011) reformed § 292 to address the false marking litigation explosion. The key reform: private plaintiffs must now have 'suffered a competitive injury as a result of a violation.' This eliminated the qui tam nature of private false marking suits — random opportunistic plaintiffs with no connection to the market can no longer sue. Only actual market competitors who can show they were harmed by the deceptive marking (e.g., customers chose the false-marker's product over the competitor's because they believed the false-marker had exclusive patent rights) can sue. The AIA also added § 292(c), which provides a safe harbor: marking with a patent number does not constitute false marking if the patent covered the article at the time of marking, even if the patent has since expired or the article is no longer being made. This addressed the largest category of false marking claims — companies that kept expired patent numbers on packaging.
Virtual patent marking: the modern compliance approach
The AIA also authorized virtual patent marking through an amendment to § 287(a). Instead of marking each article with patent numbers, manufacturers can mark articles with a reference to a freely publicly accessible internet address 'that associates the patented article with the number of the patent.' Virtual marking has significant practical advantages for companies with large product lines covered by many patents: no need to update physical packaging when new patents issue or old ones expire; a single website update covers all products; reduces the risk of false marking by keeping patent-to-product associations current and accurate. Virtual marking does not eliminate false marking risk entirely — the website reference itself must be accurate, and false statements on the marking website can still violate § 292. Companies should audit their patent marking websites regularly to ensure that listed patents are current and accurate.
Compliance best practices
To avoid false marking liability and preserve damage recovery rights: (1) Establish a patent marking program with clear responsibility for maintaining accurate marking; (2) Use virtual marking to reduce update burden — a centrally maintained website is much easier to keep current than updating physical packaging; (3) Remove expired patent numbers from marking promptly, even though § 292(c) provides some protection, keeping expired numbers on marketing materials can be confusing and raise other legal issues; (4) Maintain records showing the basis for marking each article with each patent number — documentation of good-faith marking decisions is the best defense against an intent-to-deceive claim; (5) When acquiring a company or licensing patents, review the target's marking practices and ensure accurate marking continues after the transaction; (6) For method patents, no marking is required — but document method patent status to avoid inadvertently marking articles as covered by process patents they do not embody.
Frequently Asked Questions
What is false marking under 35 U.S.C. § 292?
False marking under 35 U.S.C. § 292 is a statutory violation that occurs when a person: (1) marks an unpatented article with a patent number or the words 'patent' or 'pat.' with intent to deceive the public; or (2) marks an article as 'patent applied for' or 'patent pending' when no such application is pending, with intent to deceive. The intent-to-deceive element is critical — simple error or negligence in failing to update marking is not a violation; the plaintiff must show the defendant knew the marking was false and intended the public to be deceived. False marking creates a private right of action for 'any person' (historically a qui tam action) and the government. Penalties: a fine not exceeding $500 per article. Before the AIA, each individually marked article was a separate violation — Forest Group v. Bon Tool (Fed. Cir. 2009) confirmed per-article penalties, which led to an explosion of false marking class-action litigation since a manufacturer of millions of articles could face billions in penalties.
How did the AIA reform the false marking statute?
The America Invents Act (2011) significantly reformed 35 U.S.C. § 292 to address the wave of false marking qui tam litigation that followed Forest Group v. Bon Tool (2009). Key AIA changes to § 292: (1) Private plaintiffs must now show competitive injury: only a person who has 'suffered a competitive injury as a result of a violation of this section' may file a false marking lawsuit; this eliminated broad qui tam standing for uninjured plaintiffs; (2) Expired patents: the AIA added § 292(c), which provides that marking with a patent number does not constitute false marking if the number is that of a patent that covered the article at the time of marking — even if the patent has since expired or if the article is no longer being manufactured under the patent; this eliminated a major category of claims (companies that failed to remove patent numbers after expiration); (3) The government may still sue for false marking without showing competitive injury. These changes dramatically reduced false marking litigation from hundreds of cases per year to a small handful, primarily by companies that can show actual competitive harm from a competitor's false patent marking.
What is virtual patent marking and how does it work?
Virtual patent marking is a form of patent marking authorized by 35 U.S.C. § 287(a), as amended by the AIA, that allows patent owners to mark products with a reference to a publicly accessible website listing the relevant patent numbers, rather than marking each article with every applicable patent number. Instead of printing '5,123,456' on the product, a company can mark its products 'Patent: www.example.com/patents' or include a QR code linking to a patent list. The website must be 'freely accessible to the public' and must associate the specific articles with the relevant patents. Virtual marking advantages: eliminates the need to update physical packaging every time a new patent is added or an old one expires; reduces production costs for complex products covered by many patents; easier to maintain accurate and current marking. Compliance requirements: the website URL marked on the article must work and resolve to a page listing applicable patents; companies must maintain and update the webpage; there is no specific format requirement for the webpage, but it must clearly associate the articles with the listed patents.
What is the intent-to-deceive requirement in false marking?
Intent to deceive is an essential element of false marking — without it, the marking is not a violation of § 292 regardless of accuracy. The intent-to-deceive requirement was established in Pequignot v. Solo Cup (Fed. Cir. 2010), where the court held that: (1) falsely marking an article with an expired patent number creates a rebuttable presumption of intent to deceive; (2) however, this presumption is rebuttable, and the defendant can demonstrate that it did not intend to deceive through evidence of a good-faith belief that the marking was proper; (3) a company with a written policy to update marking when patents expire, which had not yet been implemented, may rebut the presumption. The AIA amendments interact with the intent requirement: § 292(c) now provides that marking with an expired patent number that covered the article is not false marking at all — so intent is no longer at issue for expired patent marking. Intent to deceive must be proven by clear and convincing evidence (the burden on the plaintiff).
How does patent marking affect damages recovery in infringement cases?
Patent marking under 35 U.S.C. § 287(a) affects the period for which a patent owner can recover damages in infringement litigation. Under § 287(a), a patent owner who makes, sells, or imports patented articles can recover damages for infringement only for the period during which the infringer had notice of the patent — either constructive notice (through proper marking of the patented articles) or actual notice (a specific communication identifying the patent and the infringing product). If the patent owner did not mark its products and did not provide actual notice, damages can only be recovered from the date of the infringement lawsuit filing (or from the date actual notice was given if before the lawsuit). Practical impact: a patent owner who fails to mark can forfeit years of damages if the infringer can show it was unaware of the patent. Method patents (patents claiming only methods or processes, not articles) are exempt from the marking requirement — marking does not apply when there is no patented article to mark. For process patents, damages run from the first act of infringement regardless of notice.