Protect packaging with design patents

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Design patents protect the ornamental features that determine the appearance of manufactured products. The scope of protection is limited to an included drawing describing the protected features. Design patents apply to three categories: 1. shape and proportions; 2. surface ornamentation; and, 3. a combination of form, proportion and surface ornamentation.

The above categories are relevant to packaging for several reasons. First, the appearance of packaging is at the heart of shelf impact, the ability of packaging to grab attention among competing offerings. Second, in addition to the sense of sight, the sense of touch can be activated, adding to the appeal of the consumer. Third, the more unique and complex the ornamental features of the packaging, the less vulnerable the packaging is to counterfeiting.

Design patents do not protect the function or operation of the packaging. This is the domain of a utility patent, which protects the owner against the unauthorized manufacture, use, sale and import of the patented packaging. The protection under a utility patent resides in the claims listed, not in the accompanying drawings. Therefore, unlike a design patent, utility patent protection may extend to packaging that appears to be different from what is patented.

Utility patents offer broader protection; nevertheless, design patents should be taken into account when circumstances favor them. The functions of packaging are containment, protection, communication, convenience and utility. Just because a given package performs each function does not mean that it does so in a unique way that would be protectable by a utility patent. This is the case with most packaging. On the other hand, if there is something unique about the appearance of the packaging, a design patent should be applied for, otherwise the packaging may be denied due protection. This is not to say that a particular package cannot have certain features eligible for utility patents and other features eligible for design patents.

Leveraging the packaging for a strategic advantage includes physical aspects that are not only proprietary but (hopefully) patentable. When the packaging is marked, “Patent pending” or after grant, the patent number, notice is given to the industry and the consumer. The packaging becomes part of the owner’s assets known as intellectual property.

The time to think about patents of any kind is at the design stage, in addition to any time changes to existing packaging are considered. Such a reflection, unfortunately, seems to be the exception, judging by the similarity displayed aisle after aisle in retail stores. One plausible explanation is the risk averse nature of many brand owners, opting for product line extensions and brand extension to other product categories. But patents, by definition, are issued for uniqueness, even daring, you might say. Therefore, brand owners who seek the benefits of patents should adjust their thinking accordingly.

Much of the foregoing perspective depends on whether the owner of a patent is the supplier of packaging or the user of packaging. A provider usually tries to convert as many users as possible. The potential user has to either convert, so as not to give away more to other users, or convert to something comparable or better. On the other hand, if the user owns the patent, the owner can opt for exclusive use or for a license and royalties.

Some packaged goods traders, even those with in-house packaging departments, outsource the work to companies specializing in packaging design. These design firms should be assessed, in part, on their knowledge and use of the patenting process.

When the packaging is under patent, the protection is theoretical, unless it is combined with an application. Patent infringement litigation is conducted in federal courts by attorneys experienced in patent law. These lawyers are not lone warriors; rather, the preparation of the case involves the contributions of a supporting cast. It is therefore incumbent on personnel with packaging responsibilities to have a fundamental understanding of what is involved in patent infringement.

The main standard for deciding a design patent infringement case is the “ordinary observer test”. It empowers a jury (or judge, in the case of a trial) to decide whether an ordinary observer (someone untrained in design) would confuse the accused design with the patented design. If, yes, there is an offense.

The decision is not as clear-cut as it seems. In fact, it is loaded with subjectivity. But subjectivity is no stranger to professionals involved in packaging design research and measuring consumer perceptions. These professionals can advise a lawyer on how to argue the results of the ordinary observer test.

The patent holder benefits from documentation throughout the design process. Such documentation can be used to support the patent owner’s claims regarding the scope of what is protected by the patent. As mentioned, the scope of a design patent is presented entirely by the drawing, so the drawing must be rendered in great detail. One caveat: the owner of the design patent should consider a new patent whenever he makes even minor changes; otherwise, the changes may turn out to be unprotected.

Since the demand for packaging is derived from the contained product, the documentation should also address the importance of the packaging to the competitiveness of the product, as measured by market share and profits. Such documentation is valuable when the verdict is an infringement, requiring a determination of damages. Well-argued arguments must be presented, recognizing the difficulty of quantifying the contribution of packaging, distinct from those of other marketing tools, advertising for example.

How does the patent owner come to suspect an infringement? In short, vigilance. It is the owner’s responsibility to stay abreast of what is happening in the market; after all, a counterfeiter will not inform the owner on purpose. And how does a designer avoid unintentional counterfeiting? The answer, in two words, is due diligence. A thorough search for patents for the prior art will reveal whether designs similar to what is contemplated already exist.

Packaging is unique in the different ways in which its components lend themselves to intellectual property protection. In addition to design patents and utility patents, there are copyrights, trademarks and trade dress, each associated with the role of packaging as a medium of communication. With as much a systematic approach to packaging as it is to intellectual property, its management should not be accidental, but by design.

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Sterling Anthony, CPP, is a consultant specializing in packaging, marketing, logistics and human factors. Its coordinates: 100 Renaissance Center, Box-176, Detroit, MI 48243; telephone 313-531-1875;[email protected];www.pkgconsultant.com


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