Can we patent our new package?

Harold Fullmer

For a packaging development that uses existing components and principles, how does the patent office determine whether the improvement is entitled to a patent?  Here are two successful strategizes to counter to a patent examiner’s typical negative bias against easily understood improvements.

After engineers develop a new package or make improvements to an existing one, they often ask whether the new or improved package can be awarded a patent. The answer is often uncertain because many packaging-related inventions are a combination of existing components and principles in a mature industry that is already crowded with similar products.

However, there are standards for determining whether a packaging-related invention is inventive enough to get a patent, the special negative bias that many packaging inventions face in the patent office and how to counter the bias.

For brief background, a patent is a set of rights that are granted by the U.S. Patent and Trademark Office for a technical solution to a technical problem. (There is also a requirement that the invention not be “abstract.” But abstractness is rarely a problem when the invention is something tangible.)

To a patent examiner in the patent office, the product or invention is defined in carefully worded sentences called “claims,” and it is the words of these claims that the examination is based on. In other words, the inventor defines in words what the invention is, and it is these words the examiner assesses. 

The question of whether a new package is inventive enough to get a patent usually starts with the understanding by experienced people that the improved package, machine, material or method (the “product”) is truly new—that is, it does not already exist anywhere.

But being new is not enough to earn a patent. The invention, even if new, must also be inventive enough, in the judgment of the patent examiner, to be entitled to a patent. The test of “inventive enough” is formally referred to as non-obviousness in the U.S. and as the inventive step in most of the rest of the world.

Apt guidance from the U.S. Supreme Court about whether an invention is obvious—and therefore not inventive enough for a patent—is whether the invention is a combination of familiar parts that when put together do no more than yield predictable results. This already puts packaging-related inventions at a disadvantage because they often are a combination of familiar parts that are put together for a predictable purpose.

Hindsight bias is a special problem for packaging improvements

An examiner is supposed to determine the inventiveness of the defined invention by considering, without the benefit of hindsight, whether there is a motivation or commonsense explanation for combining the parts or modifying prior products like the inventor did and roughly when the inventor did. 

But patent examiner’s break the rule against using hindsight too often.  It is, after all, human nature. And packaging-related inventions (compared to an unpredictable discovery, as might come out of chemistry or biology) are in special danger of inappropriately receiving hindsight bias because the structure and function of packaging are often easy to understand after the invention is explained to a patent examiner.

It’s natural for an examiner to look at a product that is easily understood (at least on a superficial level) and jump to a conclusion that the product is not inventive. So, we should expect a patent examiner to have a negative, instinctive, knee-jerk negative reaction based on this hindsight bias from a patent examiner when the technology is easily understood. 

Successful strategizes to counter hindsight bias

One technique to counter examiner hindsight bias is to explain in the patent application that the invention has a new function or advantage that is the product of the inventor’s special insight into the problem or that the invention addresses a new problem altogether. And the application should clearly explain any technical hurdle that the invention overcomes.

For example, suppose the invention is putting a conventional bicycle bell on a power wheelchair—which seems so straightforward that it should not be entitled to a patent. The combination, after all, merely combines two familiar elements, a wheelchair and a bicycle bell, that yield a power wheelchair with a bell that a driver can ring—a well-known structure with predictable results.

But suppose the innovative aspect is that the tin plate of the bicycle bell is engineered to corrode at the same rate as sensitive electronic contacts of the power wheelchair so that the contacts should be inspected when the bell changes pitch. Defining the invention as a way to predict electrical corrosion in a power wheelchair flips the script and illustrates the importance of explaining and defining the structure and function of the invention as well as the problem that the structure addresses.

A patent application may also counter examiner hindsight bias by using the principle that discovering or being the first to identify the source of a problem counts toward inventiveness. In this regard, in an existing papermaking machine, William Eibel found that increasing the slope of the wire-mesh feed conveyor enabled papermaking machines to run faster. [See U.S. Patent No. 845,224 and Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923).]

To put this in context, the invention was not inventing the papermaking machine shown in the patent figure below; rather, it was merely raising the height of the right side of the machine so that the wire-mesh conveyor ran downhill, where in previous machines it had been level or ran uphill.

Both the patent examiner and the U.S. Supreme Court agreed that this improvement, which looks like a trivial change of slope at first blush, is entitled to a patent. The important part is that running the wire-mesh conveyor uphill solved a then-unsolved problem and resulted in a real-world improvement.          

As anyone who receives bills from patent lawyers can tell you, the examination process gets much deeper than described above. Drawbacks and risks exist, but the gist of many patent examinations in the packaging field comes down to convincing a patent examiner that something inventive happened.

In summary, even in a crowded field like packaging, a patent examiner can be convinced to grant a patent if:

1. The structure or method defined as the invention provides a meaningful, functional improvement (especially the improvement was unforeseen).

2. No one would have combined the known parts without the inventor’s insight into the nature of the problem solved. The persuasiveness of the explanation of the new or improved function and of the insight into the problem and solution will often be the difference in convincing the patent examiner to grant a patent. 

The views expressed in this article are those of the authors and not necessarily those of BakerHostetler or its clients. 

Harold Fullmer is a partner practicing patent law at BakerHostetler in Philadelphia and is an adjunct professor of law at Temple University Beasley School of Law and at Drexel University Kline School of Law. Reach him at [email protected].

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You’ll find a generous amount of packaging options at PackEx Toronto 2019, June 4-6, from robotics to semi-automatic equipment and fresh ideas in containers and design. Plus join in free education at Centre Stage. For more information, visit PackEx Toronto.