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What kind of penalties should I expect when text about patents patents that expired in my products? (e.g. "This product is protected by Patent No. XXXX" -> This was true at one time, but not anymore, as the patent already expired)

My product is software. Do I have to pay a fee for each copy of the software sold?

And, what about the case where expired patents are used in versions of the software that, although old (let's say a newer version without the expired patents has been released), are still in use by clients?

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  • @JerryCoffin: Sorry, I was asking from the perspective of the software maker. I've edited my question to leave it clearer
    – John Assymptoth
    Commented Sep 28, 2012 at 5:24
  • @JerryCoffin - Please can you move your answer from the comments section to the answer section down below. Thanks.
    – pkz
    Commented Sep 28, 2012 at 6:40

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John, If I understand you question correctly, you are not likely to suffer any liability here in the US.

False Marking: It appears to me that you are asking a question that would fall within the doctrine of False Marking. In the US, false marking occurs when marks an unpatented product as patented for the purpose of deceiving the public. 35 U.S.C. 292. The statute includes a fine of "not more than $500 for every such offense." A few yeas ago, there were a rash of false marking claims in the US for your very situation - expired patents. Those cases where somewhat successful and there were a couple hundred payouts in the $20,000-$200,000 range. In 2011, the false marking law changed as part of the America Invents Act (AIA). Under the new rule, the only parties that can bring a false-marking action are the US Gov't and someone who has suffered a competitive injury due to the false-marking. It is highly unlikely that either of these would occur in your situation.

Regarding previously marked products. The general operative is that the products are "marked" when you put them out in the stream of commerce and there is no need to conduct a recall to scrub patent numbers that expired after you sold the product.

Here is an article that provides slightly more information from a more international perspective.

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What kind of penalties should I expect when putting patents that expired in my products?

None. Immaterial of the type of product (hardware or software) there is no penalty when you implement expired patents into your products.

However, it would be a smart decision to check and verify if the patents have really expired or they have been renewed. Some countries allow for extension (not perpetual just few more years) upon renewal.

Do I have to pay a fee for each copy of the software sold?

It depends upon your licensing agreement.

And, what about the case where expired patents are used in versions of the software that, although old (let's say a newer version without the expired patents has been released), are still in use by clients?

Do you mean infringement in a retrospective way? I will leave this for some one else to take up.

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  • Hi pkz. That's not what I was talking bout. I edited my question to make it clearer. I meant something like: "This product is protected by Patent No. XXXX" -> This was true at one time, but not anymore, as the patent already expired.
    – John Assymptoth
    Commented Sep 28, 2012 at 8:05
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    Hi John. Yeah, I got your question now. If you shipped the product before the patents expired it should be fine, if not I am not entirely sure as a matter of a rule, regulation or law. However I can speculate that since technically the patent exists even though it is expired it should not be a problem. Hope that gives some clarity.
    – pkz
    Commented Sep 28, 2012 at 11:27

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