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Just a Minor Fix in Patent Reform? Qui Tam Actions and the False Marking Statute - Podcast

Intellectual Property Practice Group Podcast

April 8, 2011

Trevor K. Copeland, Arthur Gollwitzer III, Elizabeth I. Winston, Adam Mossoff

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  Just a Minor Fix in Patent Reform?
Qui Tam Actions and the False Marking Statute
- MP3

Running Time: 01:14:54

Practice Groups Podcasts

The false marking statute of the Patent Act (35 U.S.C. § 292) prohibits marking as “patented” any product that is not patented. Section 292 also gives individuals the right to bring a qui tam action and to collect statutory damages up to $500 for each falsely marked product. Although once rarely invoked, the qui tam provision is increasingly being used by plaintiffs against large manufacturers of patented and formerly patented products. The number of qui tam lawsuits has exploded in the past couple years, and there is now a debate raging among lawyers and commentators as to whether the qui tam provision still serves its original function of punishing firms who improperly seek to squelch both free trade and the public domain by false claiming a product or service as patented. Congress is considering various ways of amending or even eliminating the qui tam provision as part of the patent reform legislation that is currently being debated on the Hill. Complicating matters, in early March 2011, a federal district court in Ohio held that the qui tam provision is unconstitutional, violating the Take Care Clause in Article II, § 3. This panel discusses the current state of play and what changes, if any, should be made to the qui tam provision of the false marking statute.



  • Mr. Trevor K. Copeland, Brinks Hofer Gilson & Lione
  • Mr. Arthur Gollwitzer, Floyd & Buss LLP
  • Prof. Elizabeth I. Winston, Columbus School of Law, The Catholic University of America
  • Moderator: Prof. Adam Mossoff, George Mason University School of Law



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Related Links

35 U.S.C. 292 False marking. - Patent Laws
35 U.S.C. 287 Limitation on damages and other remedies; marking and notice. - Patent Laws
Gray on Claims False Marking Settlement Data (from periodic FOIA requests)
“The United States Patent Marking and Notice Statutes” by Preston Moore & Jackie Nakamura
“Defining Unpatented Article: Why Labeling Products with Expired Patent Numbers Should Not Be False Marking” by Laura Arneson
“Qui-tam-osaurus, the Statutory Dinosaur: Evolution or Extinction for the Qui Tam Patent False Marking Statute?” by Trevor K. Copeland and Laura A. Lydigsen
“The Flawed Nature of the False Marking Statute” by Elizabeth Winston
Gray on Claims False Marking Entries
“False Marking Law After Stauffer V. Brooks Brothers” by Arthur Gollwitzer III and Reese McKnight (PDF)
Settlement Payments Received for Section 292 Cases – 2010 (PDF)

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