I’ve taken hundreds of pictures of patent markings over the years. Different marks catch my eye for different reasons – some have an interesting graphic presentation of patent-related information, while others have interesting text associated with the mark (various warnings and such). Most are fairly boring and completely unremarkable (yes, it’s true…a patent marking can be completely uninteresting).

There is one category of marks that I always find interesting – new products marked with expired patents. It’s not a plague, for sure, but it happens more than you might expect (more than I initially did, anyways).

This mark is one of my favorites from that category. The product is a brand new box of duct brackets – ‘brand new’ as in ‘purchased in 2009′ – that is prominently marked with United States Patent No. 3,163,386. The Patent Office issued the ‘386 patent in 1964, meaning it expired in 1981, nearly thirty years ago!

The invention is simple – an adjustable bracket for supporting ducts placed between floor joists (see Figure 1 from the patent, at right). The bracket can be installed by a single person without nails, no doubt a significant advance in 1963 (when the application was filed).

While the fact that these brackets are still being used (and preferred by contractors – I asked) is a strong testament to the significance of the invention, it does not create any sort of term extension.

A Twitter friend (@MikeDriehorst) asked whether this practice was illegal. I answered with a definitive “it depends” and then researched the matter a bit.

The False Marking statute (35 U.S.C. 292) seems sufficiently clear on its face. The second paragraph of subsection a prohibits marking an unpatented article as patented:

“Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing that the same is patented for the purpose of deceiving the public;”

The rub, of course, is the requirement of an intent to deceive. A recent district court opinion (Pequignot v. Solo Cup Co.) recognizes the question of ‘what suffices to prove the required intent when the marking involves only expired patents’ as one of first impression. That court reasoned that a presumption of the intent (established by the Federal Circuit decision in Clontech Laboratories v. Invitrogen) is diminished in these circumstances because:

“…the possibility of actual deceit, as well as the benefit to the false marker, are diminished. When a product is marked with an expired patent number, any person with basic knowledge of the patent system can look up the patent and determine its expiration date, reducing the potential for being deceived.”

The Pequignot case is currently under appeal to the Federal Circuit.

I’m working on the presentation today and will make it available for download next week.

Here’s the outline:

1. Update on “Patent Reform” legislation

- Patent Reform Act of 2007 – S.1145 (“The Leahy-Hatch bill”)

- Patent Reform Act of 2008 – “The Kyl bill” (Pharma gets its say in the waning days of the 110th Congress)

2. Update on Administrative reforms

- Cooper v. Dudas – ground rules re Chevron deference in Tafas

- Tafas v. Dudas – a background and current status of the suit against PTO for the now-infamous continuation rules package

- New Rules of Practice Before the Board of Patent Appeals and Interferences

3. Selections from the bench

An overview of several key developments in patent case law, including opinions from the Court of Appeals for the Federal Circuit, Supreme Court petitions for certiorari, and decisions from district courts.

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