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IP Alert: Federal Circuit Holds Elimination of Qui Tam False Marking Provision Constitutional

December 13, 2012

Today, in Brooks v. Dunlop Manufacturing Inc., the Court of Appeals for the Federal Circuit issued a decision relating to the federal false marking statute, 35 U.S.C. 292, and specifically the qui tam provisions of this statute.

Before the Leahy-Smith America Invents Act, any person could sue under the qui tam provisions of the statute to recover a monetary penalty for false patent marking on behalf of the United States. After a spate of false marking lawsuits, Congress amended this statute, and restricted the class of private plaintiffs permitted to bring suit to those who have suffered a "competitive injury." Congress also removed the qui tam provision and specified that only the United States may sue for the false marking statutory penalty.

In Brooks, the plaintiff had challenged the retroactive removal of the qui tam provision from the false marking statute. The plaintiff's challenges were based on the Due Process and Intellectual Property Clauses of the U.S. Constitution. The court rejected those challenges in today's decision, holding that the retroactive amendments to the false marking statute did not violate either constitutional provision.  
Today's decision marks the likely end of the road for qui tam false patent marking claims. For more information, please contact Fitch Even partner Kendrew H. Colton.

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