November/December 2009 / Features
The False Marketing Troll Emerges
Companies with a large number of patents often mark products in ways that are arguably misleading. Sometimes a product was covered by a listed patent but the patent expired, or the statement says that the product “may be covered by one or more of the following patents,” but the relevant patent has expired or the product has changed so it is no longer covered.
When such scenarios occur, the company may encounter a false patent-marking troll. The authors name two “trolls” who have filed suits against Gillette, Monsanto and other companies, and they provide advice about marking to protect against such lawsuits. The Patent Act, they note, defines a cause of action for bringing a lawsuit against a party that marks an un-patented product for the purpose of deceiving the public. An honest, though mistaken, belief that the patent covers the product is not an intent to deceive, but knowledge that the products weren’t covered may warrant a finding of the requisite intent.
The authors suggest including the expiration date of each patent listed, removing expired patents in a reasonable time, periodically reviewing a patent portfolio to make sure products fall within a reasonable interpretation of each patent listed and, if many are listed, ensuring the product is actually covered by one of them.