[Congressional Record Volume 157, Number 36 (Thursday, March 10, 2011)]
[Senate]
[Page S1545]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                          AMERICA INVENTS ACT

  Mrs. McCASKILL. I would like to discuss my amendment, No. 139, to S. 
23, the America Invents Act, on pending claims in false marking cases. 
I want to raise the issue so we can consider it in the future as this 
legislation progresses.
  The Patent Act provides a cause of action against those who ``falsely 
claim that their products are patented. A successful false-marking 
claimant must prove two elements: first, that an unpatented article has 
been marked as patented; and second that the marking was done with 
intent to deceive the public. These actions can hurt small businesses, 
start-ups and inventors who will be deterred from competing with such 
products.
  The underlying bill alters the false marking provision by stipulating 
that the statute may only be privately enforced by a person who has 
suffered a competitive injury. In addition, damages would be limited to 
those that are adequate to compensate for the injury.
  However, the legislation would also apply the newer rules to pending 
claims. These include claims that are now in the court system and under 
negotiation. By changing the rules in pending claims, the legislation 
allows potential wrongdoers to use the new law to protect themselves 
from past conduct.
  This sets a bad precedent for our legal system and could absolve 
potential wrongdoers. My amendment would simply require that the 
changes to false marking provisions to apply only to prospective cases 
going forward. Small businesses and inventors that have expended 
considerable resources to protect themselves should not be penalized by 
a provision that retroactively eliminates pending claims.
  My amendment is not an attempt to gut or strike the false markings 
provision. It is simply a modification to address the concerns of 
current litigants, consumers and small businesses. I urge my colleagues 
to strongly consider this issue going forward.

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