If the comprehensive patent reform amendment announced today is passed, qui tam plaintiffs who have been hunting for expired patent numbers to bring false marking suits will be out of luck. Only "competitive[ly] injure[d]" parties will be able to sue for false marking. The Senate bill, if enacted, would have sweeping retroactive effect even for still-pending but earlier-filed actions.
Today, leaders of the Senate Judiciary Committee announced details of an agreement by key Senate leaders on legislation for patent reform. Among the provisions of this proposed legislation is a modification of the false marking statute. Presently, 35 U.S.C. 292(b) provides that "[a]ny person may sue for the [false marking] penalty, in which event one-half shall go to the person suing and the other to the use of the United States." The proposed legislation amends 292(b) to read as follows:
(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.
The proposed legislation is retroactive as it states the amendment would "apply to all cases, without exception, pending on or after the date of the enactment of this Act."
Roughly 75 false marking lawsuits have been filed in the last two months against over 100 companies (up-to-date case information available here), with many of these qui tam plaintiffs apparently being individuals or entities specifically formed to litigate such false marking suits. The full text of the Manager's Amendment is available for review here.