Tuesday, December 13, 2011

The End of False-Marking Trolls

The recent passage of the America Invents Act (AIA) has taken the steam out of the recent frenzy of patent false-marking suits by eliminating any risk for leaving expired patent numbers on covered products. (See the text of 35 USC § 292 below). It is still a violation to falsely mark a product as patented, but the high standard for proving intent to deceive the public remains. Furthermore, so-called false-marking trolls cannot take advantage of the statute because only the United States or a party that has suffered "competitive injury" as a result of false marking can bring suit.

Friday, March 4, 2011

U.S. District Court Declares False Marking Statute Unconstitutional

U.S. District Court Judge Dan Polster ruled that the qui tam provision of the patent false marking statute (Title 35 U.S.C. § 292) unconstitutional under the Take Care Clause of Article II. The Court concluded, in pertinent part:
Applying the Morrison “sufficient control” analysis to the False Marking statute, it is clear the government lacks sufficient control to enable the President to “take Care that the Laws be faithfully executed.” As discussed, supra, unlike the FCA, the False Marking statute lacks any of the statutory controls necessary to pass Article II Take Care Clause muster. The False Marking statute essentially represents a wholesale delegation of criminal law enforcement power to private entities with no control exercised by the Department of Justice. See Pequignot, 608 F.3d at 1363 (False Marking statute is criminal). It is unlike any statute in the Federal Code with which this Court is familiar. Any private entity that believes someone is using an expired or invalid patent can file a criminal lawsuit in the name of the United States, without getting approval from or even notifying the Department of Justice. The case can be litigated without any control or oversight by the Department of Justice. The government has no statutory right to intervene nor does it have a right to limit the participation of the relator. The government does not have the right to stay discovery which may interfere with the government’s criminal or civil investigations. The government may not dismiss the action. Finally, the relator may settle the case and bind the government without any involvement or approval by the Department of Justice.

Tuesday, February 8, 2011

USPTO Releases More Information on Three-Track Examination Initiative

The U.S. Patent & Trademark Office released additional details on February 2, 2011, regarding their recently proposed “Three-Track” patent examination initiative. The PTO is seeking public comments for a 30 day period beginning with the proposals forthcoming publication in the Federal Register.

In its original proposal, published in June 2010 (75 Fed. Reg. 31,763), the Patent Office indicated that under the Three-Track proposal an applicant could (1) request expedited examination (Track I); (2) could request a delay of up to 30 months in the examination docketing of a non-continuing application (Track III); or (3) proceed under current practices (Track II). It was announced that different fees would apply to different tracks, but no fee schedule was announced.