Nishant Bora
Jul 15, 2011

Are you being intimidated by an expired patent?

Have you ever seen numeral markings on few goods like ‘Patent No. 1234567’ or one which says ‘patent pending’? Have your actions been affected by such markings? If yes, then its time for you to re-think before you make such decisions and verify the marking on those goods.


Patents have a life span of about 17 to 20 years in most of the countries. To keep them alive for over the whole span, companies have to pay maintenance fees to the respective patent offices. And once the patent expires, the holder is supposed to remove the patent numbers/ markings from the products on which they had been put to indicate a live patent whose monopoly they enjoy. Failing to do so is considered both anti-competitive and a mal-practice.

Many manufacturers fail to remove the patent markings which they put on their products, sometimes because of mere carelessness, or because of the high cost involved in changing the moulds or to deceive their competitors by false-labeling to prevent them from making similar products for fear of being sued by the patent holder for infringement.

When can these markings be used over the products? The answer is simple.

  • You can use a ‘patent pending’ marking as soon as the patent application is filed. However, care must be taken to remove the marking if any time the patent application is abandoned or even if it is granted
  • You can use a marking bearing the patent number from the time the patent is granted and so long that the patent is in force, but not beyond that. 



The pile of cases

The false marking patent law prohibits the use of the word "patent" or any word or number importing that an unpatented article is patented for the purpose of "deceiving the public." The statute in U.S. allows "any person" to sue for the penalty, which is a fine of not more than $500 for every such offense.

The floodgates were let open when in the case of Forest Group, Inc. v. Bon Tool Co.[1], the Federal Circuitruled that the false marking penalty of "$500 for every such offense" meant a fine of up to $500 per falsely marked article. Thus, if a company makes a million products marked falsely with an expired patent number, it can (at least theoretically) incur a fine of $500 million. You’re imagining it right; this could indeed turn into a catastrophe!

This immediately resulted in thousands of false patent marking cases being filed across the country. A new ‘cottage industry’ sprung up, thus, which the court in Forest Group case feared about.

Expired patent numbers on Frisbees have made this issue live again. Wham-O Inc., maker of Frisbees, is the latest defendant in an array of lawsuits against companies accused of marking their products with patent numbers that are long expired. The frisbee or "flying disc" was conceived by Walter F. Morrison in 1938. He patented the design in 1958, and then sold the rights to Wham-O. The accusation is oflabeling its Frisbees with numbers for patents that expired as long ago as 1967.Wham-O has in turn challenged the law of false marking in U.S.

It is not the decision of the case or how much damages are awarded that is relevant here. What is important is that the consumers are not misled by false patent markings where they buy products imagining that they’re paying for a technology which is worthy of a patent grant. It is equally important that expired markings do not haunt the competitors away from proceeding to innovate or make similar products.

This effort is dedicated to our right of a healthy market place.

[1] 590 F. 3d 1295 (Fed. Cir. 2009)