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be made from waste paper. The product will have good

stiffness characteristics, but not necessarily good appear-

ance. Its main use is as package inserts and envelopes.

Paperboard with similar structure, but with improved

printing surfaces, has a wide range of uses (e.g., high-

quality display). The greatest volume of paperboard is

used, however, in packaging.

Single-ply paperboard made from 100% bleached-

chemical wood pulp is used for food packaging where

purity and clean appearance is required together with a

degree of strength and a surface of sufﬁcient quality to

accept good-quality print. Materials of this type are often

coated or laminated with a plastic ﬁlm to improve barrier

properties. Compared to single-ply structures, multiply

paperboard can be used over a much wider range of

applications because virgin-pulp outer layers with good

appearance, strength, and printing properties can be

combined with lower-grade middle plies. These paper-

boards are often combined with other materials such as

plastic ﬁlm or high-quality paper in order to extend the

range of application. The general term for this range of

paperboard is folding box-board.

Another type of paperboard, known as ﬁberboard, is

used to produce large and strong cases. The materials

used for the construction of these containers are made

from several layers of paperboard. There are two main

types: solid board (two or more boards are laminated

together) and corrugated board. In the production of

corrugated board, two facings are glued to both sides of

the corrugating medium to produce a single-wall corru-

gated board. For stronger and larger boxes, three facings

and two media are used (double-wall corrugated). Triple-

wall corrugated uses four facings and three media (see

Boxes, corrugated).

The types of paperboard mentioned have, in general, a

basis weight range from 200 to 600 g/m

(B41 to 123 lb/

1000 ft

). Thicker and heavier paperboards are used in

many applications ranging from building materials to

suitcases. They are often produced by laminating many

layers of thinner paperboards.

Figure 6. Typical multi-ply forming arrangements. (a) Typical

cylinder M/C. Common throughout the world. Can be Uniﬂow,

Contra Flow, and so on, including mixtures. (b) Fourdrinier

with ‘‘on top’’ mini-Fourdriniers. Examples in Europe and the

United States. (c) Suction breast roll with Inverform units.

Example in the United States. (d) Fourdrinier with bel bond

units and mini-Fourdrinier. Examples in United Kingdom and

Europe.

Figure 7. Examples of multi-ply formers. (a) Super ultra

former. Examples include Japan, the United States, Canada,

and so on. (b) Typical combination M/C. Examples are mainly

in Europe. (c) Typical multiwire M/C. An example is Finland. (d)

Commercial application of contro ﬂow former. An example, is

Finland. Contra Flow former combined with an arcu (rotary)

former.

918 PAPERBOARD

Table 1 shows a typical range of paperboard grades

with comments on their furnish, requirements, and end

usage. The following deﬁnitions describe the most com-

mon types of paperboard used in packaging.

Body or Baseboard. This is a board that is ultimately

treated by, for example, a coating or a surface

application.

Lined Board. A multi-ply board with a liner ply,

usually of high-grade material (e.g., white-lined

chipboard).

White-Lined Board (Duplex). A board with a bleached

pulp liner and the remainder of the board

made up of, for example, a mixture of chemical

pulp and mechanical pulp. Often used for food

packaging (2).

Kraft-Lined Chipboard. An unbleached kraft liner on

a wastepaper base used for packaging products such

as electrical and mechanical components.

Test Jute Liner. This is a type of kraft-lined chipboard.

Sometimes the liner is made from a strong kraft

wastefurnish.Thismaterialiscombinedwithﬂuting

medium to produce corrugated board.

Double-Lined Board. A board lined on both sides. For

example, the outer surfaces (liner) can consist of

bleached pulp and the middle mechanical pulp. It is

used for high-quality packaging of foods and

cosmetics.

Carton Board (Folding-Box Board). Paperboard of

various compositions used for the manufacture of

folding cartons and set up boxes.

Foodboard. Single- or multi-ply paperboard used for

food packaging. It is hard-sized for water resistance.

Liquid Packaging Board. Also called special-food

board, or milk-carton board, this strong board is

usually 100% chemical pulp, often plastic-coated. It

is formed into containers for a wide range of liquids

(e.g., milk, other beverages).

Frozen-Food Board. Single- or multi-ply paperboard

with high moisture- and water-vapor resistance. It is

often single-ply, made from bleached wood pulp with

a surface coating for high-quality print.

Kraft Linerboard. A strong packaging paperboard

with a two-ply construction made essentially from

virgin kraft pulp and produced on a Fourdrinier

machine. The top ply is added by means of a

Table 1. Examples of Typical Paperboard Grades

Board Grade

Grammage Range

g/m

(lb/1000 ft

)

Typical Furnish

Special

Requirements

(Physical) Typical Usage

White-lined folding-

box board

200–800 Liner, virgin pulp Bending General packaging cartons

(40–160) Underliner, mechanical

pulp

Printing

Middles, waste Plybond

Backs, mixture (mechanical

and chemical pulp)

Stiffness

Chipboard 200–800 100% waste Bending Packaging cartons, tubes,

and stiffeners

(40–160) Plybond

Gypsum board 300–800 100% waste Plybond Outer component of

plasterboard

(60–160)

Test liner 150–300 Liner, virgin pulp (kraft):

rest, waste

Bending Outer components of

corrugated

containerboard

(30–60) Bursting strength

Plybond

Crush resistance

Linerboard 150–300 100% virgin pulp Bursting strength Outer components of

corrugated board(30–60)

Foodboard 200–600 100% virgin pulp (single- or

multi-ply)

Bending All foods, especially frozen

foods (high-quality

containers)

(40–120) Printing

Plybond

Stiffness

Liquid packaging 200–400 100% virgin pulp (single- or

multi-ply) with barrier

(coating and/or laminate)

Bending Containers for wide range of

liquids including milk(40–80) Printing

Plybond

Stiffness

Fluting medium 90–200 Typical—100% waste or

semichemical hardwood

pulp

Crush resistance Inner components of

corrugated

containerboard

(18–40)

g/m

= 0.2 lb/1000 ft

PAPERBOARD 919

secondary ﬂow box. It is used in the manufacture of

large containers, combined with ﬂuting medium to

form corrugated board.

Fluting Medium (Corrugating Medium). A board

usually with a basis weight of 100–125 g/m

(20–25

lb/1000 ft

) and a caliper of 225 mm (9 mil) made from

semichemical hardwood pulp or waste paper. The

material is ﬂuted in a corrugating machine and

combined with linerboard to produce corrugated

board.

Chipboard. A paperboard made from waste paper,

used in low-grade packaging, solid ﬁber, and book-

board. Chipboard is not usually used in contact with

food, but is used as an outer carton (2).

Machine-glazed Board. Paperboard that in its manu-

facture has had one face made smooth and glossy by

drying on a large polished steam-heated drying

cylinder (Yankee cylinder).

Tube Board. A paperboard generally unsized and

smooth ﬁnished. It is slit into narrow widths for

winding and pasting into spiral or convoluted mail-

ing tubes, cores, etc.

Can Board. Paperboard used for the manufacture of

composite cans and ﬁber drums. The cans are used

for packaging a wide range of materials including

liquids and powders.

Coated Boards. Paperboards of various grades that

have been coated on one or both faces in order to

make the surfaces suitable for high-quality printing.

ENVIRONMENTAL CONCERNS

Environmental and waste issues are current major issues

(1). Paperboard’s advantages are as follows:

1. The main raw material (wood) is based on a natu-

rally renewable resource, the growth of which re-

moves carbon dioxide from the atmosphere, thereby

reducing the greenhouse effect.

2. When the packaging is completed, many types of

paperboard packaging can be recovered and re-

cycled. If these are not options, it is biodegradable

in a landﬁll.

BIBLIOGRAPHY

B. W. Attwood, ‘‘Paperboard’’ in M. Bakker, ed., The Wiley En-

cyclopedia of Packaging Technology,1stedition,JohnWiley&

Sons, New York, pp. 500–506; 2nd edition, A. J. Brody and K. S.

Marsh, eds., 1997, pp. 717–723.

Cited Publications

1. M. J. Kirwan, ‘‘Paper and Paperboard--Raw materials, Proces-

sing, and Properties’’ in M. J. Kirwan, ed., Paper and Paper-

board Packaging Technology, Blackwell Publishing, London,

2005.

2. J. G. Brennan and B. P. F. Day, ‘‘Packaging’’ in J. G. Brennan,

ed., Food Processing Handbook, Wiley-VCH, Weinheim, 2006.

PATENT LAW PRIMER FOR THE PACKAGING

INDUSTRY*

KEITH A. ZULLOW

Goodwin Procter LLP**

RAIVO A. KARMAS

Sandoz Inc.

INTRODUCTION TO THE UNITED STATES PATENT

SYSTEM

The Role of Patents

Patents have economic and business implications. For ex-

ample, in 2006, on the eve of a patent infringement trial

involving semiconductor packaging, the parties entered

into an $80 million settlement (1). While such multi-million

dollar disputes do not occur every day, patents are regularly

used to generate licensing revenues, to block competitors

from a market, and as negotiating tools. The packaging

industry has been active in building patent portfolios in

diverse packaging-related technologies such as packaging

machines, systems and materials, methods of manufacture,

closure systems, and so on. Universities have also become

more active in patenting inventions to generate licensing

revenues. For example, U.S. Patent 7,213,967, entitled

‘‘Method and System for Conservative Evaluation, Valida-

tion and Monitoring of Thermal Processing,’’ was issued to

researchers from the University of North Carolina (2).

To function most effectively in a world where patents

play an ever larger role, scientists and engineers should

have at least a basic understanding of patents and what

they can and cannot do. Lack of such knowledge can be

costly. For example, learning about a competitor’s patent

too late could prevent a product launch even though plant

and equipment have been built and purchased and em-

ployees have been hired and trained.

The Foundations of U.S. Patent Laws

The U.S. Constitution. The U.S. Constitution explicitly

authorizes Congress to provide a system to encourage

innovation by providing inventors with exclusive rights

to their discoveries for a limited amount of time. This is

the foundation of U.S. patent laws, which grant inventors

the right to exclude others, for a limited time, from

making, using, selling, or offering for sale in the United

States, or importing into the United States, a patented

invention. George Washington signed the ﬁrst patent

statute in 1790 (3). Since then, U.S. patent laws have

undergone various revisions. Currently, the patent statute

is codiﬁed in Title 35 of the United States Code.

The associated rules and regulations are in Title 37 of

* Revised from a series originally published in Cereal Foods World

53(1–5), 00–00, 2008.

** Disclaimer: This column is prepared and published for infor-

mational purposes only and should not be construed as legal

advice. The views expressed in this column are those of the

authors and do not necessarily reﬂect the views of the respective

author’s law ﬁrm (or its individual partners) or employer.

920 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

the Code of Federal Regulations. More recently, Congress

has been considering revisions to harmonize U.S. patent

law with that of the rest of the world.

The United States Patent and Trademark Ofﬁce

(‘‘USPTO’’). The USPTO interprets and applies U.S. pa-

tent laws to determine whether inventions are patentable.

This chapter focuses predominantly on ‘‘utility patents.’’

Utility patents protect the way an article is used and

works. To receive a utility patent, an invention must have

a utility and it must be novel and nonobvious. These

requirements are described below.

Utility: A patentable invention must have a practical

use (4). This standard is easy to meet, but there are

some restrictions (5). For example, inventions that

only have harmful uses are not patentable, nor is the

impossible (such as a perpetual motion machine)

patentable.

Novelty: A patentable invention must be new (6). It

cannot already exist in the public domain, also

known as the prior art. For example, an inventor

cannot patent what someone else has already done

or published. Furthermore, if an inventor publishes

his own invention, a patent must be sought within a

time period set forth in the U.S. patent laws, or the

invention will not be considered new. Therefore, to

avoid inadvertently losing the right to obtain a

patent, one should speak with a patent attorney

before disclosing an invention to the public, through

publication, commercial use, or any other means.

For example, the courts invalidated a design patent

directed to an ornamental juice container design

because the patentee had offered for sale containers

of an indistinguishably similar design more than

one year before applying for the design patent (7).

The prior offer for sale rendered the container de-

sign non-novel.

Obviousness: Even novel inventions cannot be pa-

tented if they are obvious (8). An invention is

obvious if it is a straightforward combination or

application of prior art information and does not

require doing something inventive. For example,

two patents directed to meat packing technology

were invalidated as obvious in view of prior art

patents that, taken together, disclosed features si-

milar to those in the invalidated patents. This was

so even though the invalidated patents were the ﬁrst

to have combined the prior art features (9).

In addition to utility patents, one can seek design

patents. Design patents cover ornamental features of an

object. To receive a design patent, an ornamental feature

must be novel and nonobvious. The utility requirement

does not apply to design patents.

The Federal Courts. The federal court system interprets

and applies the patent laws to resolve disputes between

patentees and potential infringers. Patent disputes begin

in one of the United States District Courts (‘‘District

Courts’’). All patent appeals from District Courts are

heard by a single court, the Court of Appeals for the

Federal Circuit (‘‘the Federal Circuit’’). The District

Courts must abide by Federal Circuit rulings. Having

the Federal Circuit handle all patent appeals promotes

uniformity in interpretation and application of patent

laws, thereby strengthening the patent system. Appeals

from the Federal Circuit go to the U.S. Supreme Court.

The Federal Circuit (and all U.S. courts) must abide by

Supreme Court rulings.

The Terminology of Patent Enforcement: Infringement,

Validity and Enforceability

Patent disputes typically concern the infringement, valid-

ity, and/or enforceability of a patent. These terms are

explained below.

Infringement: Patents give patent holders the right to

prevent others from making, using, selling, or offer-

ing for sale in the United States, or importing into

the United States, the patented inventions (10).

Infringement occurs when one violates such patent

rights without authorization (for example, without a

license) from the patent holder. The relief for in-

fringement can be damages and/or an injunction

(11). Damages are payments of money. Injunctions

involve a Court ordering an infringer to stop all

infringing activity, even if it means closing plants,

recalling products, and eliminating jobs.

Validity: An issued patent is presumed to be valid

(12). This means that it can be used to exclude

others from infringing unless someone proves that

the patent is invalid or unenforceable. Invalidity

is a defense to patent infringement and requires

proof that a patent, even though it issued, does not

satisfy the requirements of patentability, such as

utility, novelty, or nonobviousness. Proof of invalid-

ity precludes the patentee from recovering damages

or obtaining an injunction even if there is

infringement.

Enforceability: Patent applicants have a ‘‘duty to dis-

close’’ (13) to the USPTO all information that the

applicants believe could be material to determining

whether

a patent should

issue. The USPTO Exam-

iner relies on the applicant for such disclosure. In

contrast, an accused infringer, through the litigation

process, can review the patent holder’s internal

documents, including notebooks, e-mails, reports,

memoranda, and the like. If these documents show

that the patentee violated the duty of disclosure (by

intentionally failing to disclose information to the

USPTO or misleading the USPTO), a court can ﬁnd

the patent unenforceable. An unenforceable patent

cannot be enforced, even if it meets the require-

ments of patentability and is infringed. For example,

in a case concerning a patent to nonhydrogenated

canola oil having superior oxidative and fry stability,

the inventor obtained the patent by telling the

examiner that the new oil had superior stability

compared to similar oils. The alleged infringer,

PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY 921

however, proved that the applicant withheld contra-

dictory data from the patent examiner. As a result,

the Court found the patent unenforceable (14).

The Players

The following entities are involved in obtaining and

enforcing patents.

The USPTO is the administrative agency empowered

to issue patents in accordance with the patent

statute and rules. Patent examiners work with

applicants to determine whether inventions are

patentable.

The Federal Courts are the arbiters of patent disputes.

Litigation in the federal courts is an adversarial

process in which patent holders attempt to enforce

their patent rights and alleged infringers defend

themselves. The written decisions of the federal

courts set precedent for interpreting and applying

patent laws. Federal Circuit patent decisions are

available at http://www.cafc.uscourts.gov/dailylog.

html.

Inventors are the creators of intellectual property.

Society is the ultimate beneﬁciary of intellectual prop-

erty. Intellectual property laws strive to balance the

goals of spurring innovation for the beneﬁt of society

while preventing removal of common technology,

ideas, and business tools from the public domain.

Persons of skill in the art are the contemporaries to

whom patent teachings are addressed, and through

whose eyes patents are interpreted.

Businesses frequently invest in and own intellectual

property, and set strategies regarding what intellec-

tual property to pursue and how to protect and

leverage it.

Patent Counsel are company and law ﬁrm attorneys

involved in planning and implementing patent-re-

lated activities, including:

Developing and implementing patent strategies,

budgets and priorities;

Drafting and ﬁling patent applications and work-

ing with the USPTO to obtain patents;

Managing and maintaining patent portfolios;

Licensing patents;

Monitoring competitor patent activity;

Providing legal opinions regarding patent infringe-

ment, validity and enforceability;

Evaluating patent portfolio value and strength

prior to mergers or acquisitions, and;

Litigating patent disputes.

A Changing World for Innovation and Its Laws

The value of a patent depends on its scope and strength.

Evaluating the scope and strength of a patent requires

staying abreast of changes in U.S. patent laws and their

interpretation by the Federal Courts. For example, the

U.S. Supreme Court has shown a renewed interest in

patent cases, recently deciding cases relating to the

standard of obviousness (15), the standard for awarding

a permanent injunction in patent cases (16), the propriety

of a licensee (i.e., the party taking a license from the

patent owner) suing a licensor (i.e., the patent owner) to

invalidate a licensed patent (17), and application of patent

exhaustion doctrine, under which the initial authorized

sale of a patented item or process terminates all patent

rights to that speciﬁc item or process (18). Thus, although

U.S. patent laws have existed for over 200 years, they are

constantly evolving.

THE INTERPLAY BETWEEN PATENTS AND OTHER FORMS

OF INTELLECTUAL PROPERTY

Intellectual property has been deﬁned as ‘‘[a] category of

intangible rights protecting commercially valuable pro-

ducts of the human intellect’’ (19). In practical terms,

intellectual property relates to patent, trademark, copy-

right, and trade secret rights. Utility patents and trade

secrets protect functionally useful technologies (i.e., the

useful arts), but in different ways. Design patents

protect ornamental features of an article of manufacture.

Trademarks, which include trade dress and servicemarks,

protect brand reputation and are extremely important

with respect to consumer products packaging. Copyrights

protect works of authorship, including computer

software programs, and are available for registration of

packaging designs. Table 1, at the end of this section,

compares the forms of intellectual property discussed in

this section.

Patents

Patentable Subject Matter. There are three types of

patents: utility and design patents, which relate to packa-

ging, and plant patents. The discussion below focuses

primarily on utility patents.

Utility patents cover new and useful processes, ma-

chines, articles of manufacture, or compositions of matter

(4). These subcategories are broad and cover most inven-

tions, including packaging machinery and systems, che-

mical compounds, formulations, methods of synthesizing

compounds, and more. Abstract ideas, principles of nat-

ure, and purely mathematical formulas without a practi-

cal application are not patentable.

The USPTO has issued over seven million patents, and

it posts thousands of newly issued patents every Tuesday.

One can use the USPTO to learn about a ﬁeld of interest

searching and reading

patents and published patent

applications as follows:

1. Go to: http://www.uspto.gov/patft/index.html;

2. On the left side of the page, under issued patents,

select ‘‘Advanced Search’’;

3. In the Query box, type a search term;

4. Click on the ‘‘Search’’ button.

The result will be a list of issued patents. Utility patents

are numbered without preﬁx, design patents have the

preﬁx ‘‘D,’’ and plant patents have the preﬁx ‘‘PP.’’

922 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

Table 1. A Comparison of Patents, Trademark

s, Copyrights, and Trade Secrets

Utility Patent

Design Patent

Trademark

Trade Secret

How created

Invented

Used in commerce

Independent creation

once ﬁxed in tangible

form

Expended efforts

Governing Law

Federal (35 U.S.C.)

Federal (15 U.S.C.:

Lanham Act) & State

Federal (17 U.S.C.: post

1-1-1978)

State

Federal: Economic

Espionage Act

Federal system for

conferring rights

USPTO assess

patentability

USPTO assess

patentability

USPTO ensures criteria

are met

No substantive

examination

n/a

Registration with

suggested but not

required

Subject Matter

Useful arts

Ornamental features Words, symbols

, sounds,

trade dress, etc., used

to associate a product

or service with its

source

Forms of expression, not

underlying ideas or

functional features

Secret information that

provides a competitive

advantage

Criteria

Utility

Novelty

No prior user

Original, but not

necessarily novel

Secret

Novelty

Nonobviousnesss

Distinctive mark

Nonobviousness

Other

Duration

20 years from earliest

ﬁling date

14 years from issuance. As long as trademark

is in

use

Individual

As long as kept secret

70 years after the author’s

death

Works for hire,

anonymous,

pseudonym

Earlier of: 95 years from

publication or 120 years

from creation

Nature of exclusive rights Preclude others from

making, using, selling,

offering for sale in the

United States, or

importing into the

United States

Preclude others from

making, using, selling,

offering for sale in the

United States, or

importing into the

United States

Preclude use of

confusingly similar

mark with similar

goods or services

Control over

reproduction,

derivative works,

distribution,

performance, display,

and digital

transmission

Preclude

misappropriation

923

The Nature of Patent Rights.

Patent Rights Are Governed By Federal Law. Each coun-

try has its own patent laws. The U.S. Patent Statute is

codiﬁed in Title 35 of the United States Code. U.S. patents

provide rights only in the United States and its territories.

Therefore, a patent application must be ﬁled in each

country in which patent rights are sought. Furthermore,

one does not have to live in or do business in the United

States to obtain or enforce a U.S. patent.

The Goal Is Disclosure, Not Secrecy. A patent, and the

concomitant right to exclude others, is granted in ex-

change for disclosing to the public the details of how to

make and use an invention, including disclosure of the

inventor’s understanding of the best way to make and use

the invention when the patent application was ﬁled (20).

Such disclosure enriches the public knowledge, provides a

foundation for future innovation, and gives competitors

notice of what a patent covers, so that the competitor can

try to avoid infringement. Failure to disclose such infor-

mation may render a patent invalid if the adequacy of

disclosure is challenged during a patent dispute.

An Application Is Examined Before Patent Rights Are

Granted. The USPTO grants patents only after a USPTO

examiner has reviewed an application and found that it

complies with all statutory criteria. To be patentable, an

invention must have utility and be novel and nonobvious,

and the patent application must satisfy the disclosure

requirements mentioned above (21).

A Right to Exclude. A U.S. patent confers upon the

patent owner a time limited right to exclude others from

making, using, selling, or offering the invention for sale in

the United States, or importing the invention into the

United States. A patent does not, however, grant the

patentee any right to make, use or sell anything. For

example, assume that Company A has patented a novel

polymer A and that Company B has patented an improved

method of synthesizing the polymer. Company A can use

its patent to preclude Company B from using polymer A in

any way. Likewise, Company B can use its patent to

preclude Company A from synthesizing polymer A using

the improved method. Due to the exclusive nature of

patent rights, companies in patent-active industries often

obtain freedom-to-operate or noninfringement opinions

before investing too much on developing or launching a

new product.

Duration. The right to exclude others from practicing a

patented invention starts on the date that the patent is

issued by the USPTO and ends on the patent’s ‘‘expiration

date.’’ Although a patent suit cannot be initiated until a

patent is issued, under certain circumstances, damages

may be recoverable for infringement that occurred before

issuance (22). The right to exclude others from practicing

a patented invention ends on the patent’s expiration date.

The expiration date of U.S. utility patents (and U.S. ‘‘plant

patents,’’ which are not discussed in this chapter) is

typically calculated as 20 years from the date that the

application was ﬁled, while design patents expire 14 years

from the date the patent is granted. However, the expira-

tion date of a utility patent in force on June 8, 1995 (or

that issued on an application that was ﬁled before June 8,

1995) is the greater of 20-years from the earliest applic-

able ﬁling date or 17 years from the patent grant. In

addition, a patent term extension may be granted when

speciﬁc types of delays occurred during PTO examination

of the patent application. Ultimately, determining the

expiration date of a patent can be complex. Therefore, it

is best to consult an attorney when trying to determine the

expiration date of a patent of interest.

Enforcing Patents. Obtaining a patent does not guaran-

tee that a competitor will not attempt to practice the

patented invention. This is because the competitor (1)

may not know about the patent or (2) may know about

the patent but think it is not infringed or that it is invalid

or unenforceable (and may have a legal opinion support-

ing this position). Therefore, a patent holder should

vigilantly identify potential infringers, analyze suspected

products, and enforce patents as appropriate. This could

involve either (a) contacting the potential infringer to

discuss licensing or some other arrangement or (b) initi-

ating a law suit seeking damages and an injunction.

Design Patents. Design patents are granted on orna-

mental designs of articles of manufacture (23). A design

patent protects only the appearance of the article and not

structural or utilitarian features. In the packaging ﬁeld,

protectable designs include the overall conﬁguration or

shape of the package. For example, The Coca Cola Com-

pany received a design patent for its contour bottle in the

1930s (24). Ornamentation on the surface of the package

may also be patentable. Like utility patent applications,

design patent applications are reviewed for novelty and

nonobviousness, among other criteria. Inventions with

both a utility and a novel appearance may be eligible for

both utility and design patent protection.

Trademarks

Subject Matter of Trademarks. Trademarks are any

‘‘word, name, symbol or device, or any combination

thereof,’’ used by providers of goods and services to

distinguish their goods and services from others in the

minds of consumers (25). Features such as color, shape,

smell,

sound, and conﬁguration

may also serve as a mark

(26, 27). A loyal consumer will often associate a trademark

with certain characteristics of a brand, such as quality or

durability. This phenomenon is often referred to as ‘‘brand

recognition.’’ Trademarks, therefore, encourage companies

to invest in the goodwill associated with their trademarks

by producing products with desirable qualities. Trade-

mark disputes arise when marks on similar goods lead

to consumer confusion or deception.

Trademarks Cannot Contribute Functionality to the Pro-

duct. The purpose of a trademark is to associate a good

with its source. A trademark should not provide function-

ality to the product. For example, a trademark was

granted for a unique scent applied to embroidery yarn,

924 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

because the scent was not a natural or inherent feature of

the yarn and provided no utilitarian advantage other than

to identify the manufacturer (26). If the scent had utility,

patent protection would have been more appropriate.

Trademarks Should Not Be Descriptive of the Product or

Service. One should be allowed to accurately describe his

products or services without fear of infringing a trade-

mark. Therefore, trademark law is loathe to remove

descriptive words from the public domain. In contrast,

distinctive words make strong trademarks. Trademarks

are, as a result, classiﬁed on a spectrum of increasing

distinctiveness as generic, descriptive, suggestive, or arbi-

trary/fanciful (28).

Generic words lack distinctiveness and are ineligible

for protection because it would be unfair to deny

competitors the right to refer to their products by

name. Thus no one can claim the exclusive right to

use the phrase ‘‘Barrier Bag’’ as a trademark for

bags made from ‘‘barrier materials’’ possessing ‘‘bar-

rier characteristics’’ (29).

Descriptive words describe the product, its attributes,

or its claims. Descriptive words have little distinc-

tiveness and are protectable only after developing

‘‘secondary meaning’’ wherein the public associates

the mark with the products of a single source. For

example, ‘‘Squeeze ‘n Serve’’ as applied to a ketchup

container was denied trademark registration be-

cause it is merely descriptive of a feature of the

product and had not developed secondary meaning

(30).

Suggestive marks do not name or describe the pro-

duct, but still suggest qualities or claims of that

product. Suggestive words are given trademark

rights without demonstrating secondary meaning.

‘‘Loc-Top’’ as applied to bottle closure caps is an

example of a suggestive mark (31).

Arbitrary or fanciful marks are the strongest. Such

marks bear no logical relationship to the product on

which they are used. ‘‘Apple’’ as applied to compu-

ters is an arbitrary mark. ‘‘Exxon’’ and ‘‘Kodak’’ are

made-up terms and are fanciful marks (28).

The Nature of Trademark Rights. Trademarks do not

exist on their own. Trademarks must be associated with

a product or service. Actual use of a mark (or intended use

followed by evidence of actual use) is necessary to estab-

lish and maintain a trademark. A valid trademark gives

the owner the right to prevent others from using a

confusingly similar mark with related goods or services.

Trademarks Are Governed by State and Federal Law. Fed-

eral and state laws provide for trademark registration, but

the systems differ. State registrations are typically admi-

nistered by the Secretary of State. Each state has its own

requirements. The federal system involves USPTO exam-

ination to ensure that there are no conﬂicting marks and

that the mark is proper. Furthermore, to obtain federal

protection, a mark must be used in interstate commerce.

The ‘‘

’’ symbol denotes a federally registered trademark

and may only be used with registered marks. Federal

registration lasts 10 years and is renewable indeﬁnitely

as long as the mark is in use (32).

Trademark registration is not required, but it offers

enforcement advantages if litigation arises. The ‘‘TM’’ or

‘‘SM’’ symbols are available for state registered and un-

registered marks. They denote a common law or state

registered trademark or servicemark and are not gov-

erned by federal statute. Using the appropriate symbol is

important because it impacts the defenses alleged infrin-

gers can raise in litigation.

Duration. Unlike patents, trademarks can last indeﬁ-

nitely. However, trademarks can be lost through non-use

or if the mark becomes ‘‘generic.’’ A mark becomes generic

when the public starts using the mark as a noun rather

than an adjective to describe the product’s source of origin.

For example, the former trademark ‘‘cellophane’’ became

generic (28). While companies invest heavily in promoting

trademarks, they also take pains to prevent the trade-

marks from becoming generic.

Copyrights

Subject Matter of Copyrights. Copyrights protect origi-

nal works of authorship, including literary, musical,

dramatic, choreographic, sculptural, audiovisual, and ar-

chitectural works (33). These categories are interpreted

broadly. For example, a computer program can be consid-

ered a literary work, and the decorative features of a belt

buckle can be considered a sculptural work.

Novelty is not required to receive copyright protection,

provided that the work is original to the author. Thus,

independent creation is a defense to copyright infringe-

ment. In contrast, independent (but later) invention is not

a defense to patent infringement (although it may be a

defense to a charge of ‘‘willful’’ infringement, where a

patentee seeks ‘‘enhanced’’ damages from an alleged

infringer).

Copyrights Protect Form of Expression. Copyrights pro-

tect forms of expression, not underlying ideas or informa-

tion conveyed. For example, an engineer could write a

manual on how to build a new reaction vessel and obtain

word for word, without permission would be copyright

infringement because the manual, as written, embodies

the form of expression. However, following the manual’s

instructions to build the reaction vessel would not violate

the copyright. Protecting the vessel itself would require a

patent.

Additionally, copyrights do not protect functional fea-

tures of a device. For example, a copyright might protect

ornamental aspects of a belt buckle as a sculptural work,

but will not protect the functional features themselves

(34). Design patents and trade dress might also protect

such nonfunctional features.

Computer Software. Copyright and patent protection

overlap when it comes to computer software. A computer

PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY 925

program, as a written expression of language, is eligible

for a copyright for the program code. The functional

aspects of the program as executed—what it does—are

not copyrightable, but may be patentable.

The Nature of Copyright Protection. The copyright

owner has the right to control reproduction of the copy-

righted work, preparation of derivative works, distribu-

tion of copies, public performances, public displays, and

public digital audio transmissions.

tion is afforded by federal statute, set forth in Title 17 of

the United States Code. Congress adopted the ﬁrst copy-

right statute in 1790, and since then it has made sub-

stantial changes to the copyright laws in 1831, 1870, 1909,

and 1976 (33). For most purposes, the provisions of the

1976 Copyright Act went into effect on January 1, 1978.

The 1909 Act continues to be important for protected

works that were originally governed by the 1909 Act (33).

Registration Is Available. A work receives copyright

protection under the 1976 Copyright Act as soon as it

has been ‘‘ﬁxed in a tangible form of expression’’ (33). This

is a relatively easy standard to meet. If a work can be

perceived and copied, it is in a tangible form of expression.

For example, notes on a blackboard can have copyright

protection. Registration with the U.S. Copyright Ofﬁce is

not required to get copyright protection, but registration

provides beneﬁts. A work can be registered at any time

during the life of a copyright (35). For works authored

prior to January 1, 1978, the Copyright Act required

certain formalities to receive protection and to maintain

protection.

Duration. Copyright duration depends on when the

work was created. A typical lifespan for a work under

the current law can be 70 years from the author’s death.

However, for ‘‘works made for hire,’’ anonymous, and

pseudonymous works, it is the earlier of 95 years from

publication or 120 years from creation (35). Works under

the prior act (i.e., works authored prior to January 1,

1978) could last for a maximum of 95 years.

Overlap Between Copyright, Patent, and Trademark Law

The nonfunctional features of a package may be protect-

able as trademarks/trade dress, by design patent, and by

allegedly infringing its design patent and copyrights to

packaging for a food product. Based on the design patent

infringement claim, the court granted preliminary injunc-

tive relief, enjoining the defendant from selling its product

in its infringing packaging (36). Because the nature of the

protection provided by trademarks, design patents, and

copyrights differ, an intellectual property attorney should

be consulted when deciding how best to protect nonfunc-

tional features of a package.

Trade Secrets

Subject Matter of Trade Secrets. A trade secret is vir-

tually any type of conﬁdential information that provides

its owner a competitive advantage because the informa-

tion is not generally known or readily ascertainable. Trade

secrets can encompass patentable information, such as

product formulations, or nonpatentable information, such

as customer lists. The ‘‘formula’’ for Coca-Cola

is an

example of a trade secret.

The Nature of Trade Secret Rights.

Trade Secrets Are Governed by State Law. Trade secrets

are governed by state law, not federal law (except for the

Federal Economic Espionage Act of 1996, 18 U.S.C. yy

1831–39, which is beyond the scope of this chapter).

Therefore, the deﬁnition of a trade secret can vary from

state to state, with important implications. For example,

in a case involving a technical executive moving from a

ﬁrst company to a competitor, the court recognized three

theories of trade secret misappropriation: actual, threa-

tened, and inevitable disclosure. The ﬁrst company’s posi-

tion was that the executive would inevitably communicate

its trade secrets to the competitor. The court indicated

that under an inevitable disclosure theory, misappropria-

tion would exist. But, the case was decided under state

laws that did not recognize ‘‘inevitable disclosure,’’ and no

misappropriation was found (37). Such cases highlight

how important it is for companies to have protocols that

address expectations and obligations of newly hired em-

ployees and employees that leave to ﬁnd work elsewhere.

Trade Secrets Do Not Involve a Registration or Review

Process. As explained above, the goal of patent law is

disclosure, not secrecy. In contrast, the value of a trade

secret is its secrecy. One does not ‘‘apply’’ for a trade

secret. Instead, trade secrets simply exist if kept secret.

Indeed, failure to adequately protect the secrecy of the

trade secret can result in its loss.

Duration of a Trade Secret. While patent rights expire

when a patent expires, trade secret rights last as long as

secrecy is maintained. Therefore, maintaining trade se-

crets requires reasonable measures to prevent careless

disclosure by employees or easy access by outsiders. Such

measures include establishing and enforcing company

policies regarding trade secrets, educating employees

about maintaining trade secrets, limiting employee

and visitor access to sensitive information and areas,

maintaining nondisclosure agreements with employees

and third parties, screening information in marketing

and sales materials to prevent disclosure of trade secrets,

controlling communications with vendors and co-manu-

facturers, and using noncompete agreements where

appropriate. One can sue if a trade secret is misappro-

priated. Reverse engineering a product to learn a trade

secret is not misappropriation.

To Patent or Maintain As A Trade Secret

Companies often must decide whether to seek patent

protection or maintain information as a trade secret. In

926 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

making the decision, one might consider the following

factors:

Period of an Invention’s Utility: Is the ﬁeld of inven-

tion fast moving? If so, is it worth spending the time,

potentially years, to obtain a patent – or is trade

secret protection preferable?

Plans to License or Sell the Invention: Will the inven-

tion be licensed or sold? If so, patent protection may

be preferable.

Ability to Reverse Engineer: Is the invention easy to

reverse engineer? If so, patent protection may be

preferred. Typically, products are easier to reverse

engineer than processes.

Ability to Design Around: Will the invention obtain

broad or narrow patent protection? If the invention

is narrow and the same result can easily be achieved

without using the invention, does the invention

merit patent protection?

Combining Patent And Trade Secret Protection:An

applicant, after having ﬁled a patent application for

an invention, may develop patentable improvements

that can be protected by patent or as trade secrets.

Summary Comparison of Patents, Trademarks, Copyrights,

and Trade Secrets

Table 1 provides a summary comparison of the different

forms of intellectual property discussed above.

OBTAINING A PATENT

This section introduces the concepts and terminology

involved in obtaining patents and the strategic purposes

for doing so. As explained below, the procedure for obtain-

ing a patent is very rule oriented.

How Patents Fit into Business Plans

Before seeking a patent, a company should understand

what role patents can or will play in its business plan. For

example, companies obtain patents for different reasons,

including:

Excluding others and protecting a competitive

advantage

Maintaining customer conﬁdence (e.g., for ingredient

suppliers)

Generating licensing revenue

Creating negotiating leverage when dealing with

competitors

Attracting potential acquirers

The Value of a Patent

Once a company decides to obtain a patent, it makes sense

to obtain the most valuable patent possible. Patent value

depends on many factors, including:

Usefulness:. Value increases with increasing useful-

ness/necessity of the patented technology to the

patent holder and/or its competition.

Unassailability:. Valuable patents can withstand

challenges to their validity and enforceability dur-

ing a lawsuit.

Breadth:. Value increases with increasing breadth of

the patent, making it harder for competitors to

achieve a similar result without infringing the

patent.

The Patent Process

There are three primary phases in obtaining a patent: (1)

the invention, (2) drafting and ﬁling the patent applica-

tion, and (3) prosecuting the patent application before the

USPTO. Each phase requires a commitment of resources

and money. Additionally, phases 2 and 3 involve attorney

time and USPTO fees. A schedule of such fees, including

reduced fees for ‘‘small entities,’’ is available at the

USPTO website (38). An overview of each phase is pro-

vided below.

The Invention. Many companies have procedures for

employees to submit inventions for review and potential

patenting. Such procedures often employ an invention

disclosure form which:

Identiﬁes the potential inventors and their contribu-

tion(s) to the invention

Describes the invention, how to make and use it, and

how and when it was developed

Identiﬁes materials (notebook(s), memoranda, etc.)

that record the work underlying the invention

Identiﬁes prior art

Identiﬁes past and planned marketing activities

Identiﬁes past and planned publications or presenta-

tions regarding the subject matter of the invention

Typically, a committee comprising members from tech-

nical, business, and legal departments meet and review

invention disclosures to assess commercial viability and

determine whether to seek patent protection, rely on trade

secret protection, or take no action at all.

The United States has a ﬁrst-to-invent patent system.

This means that if two inventors ﬁle separate patent

applications on the same invention, the patent goes to

the ﬁrst inventor, regardless of who ﬁled the ﬁrst patent

application. Laboratory notebooks and internal memor-

anda are often used to establish the invention date.

Most of the rest of the world uses a ﬁrst-to-ﬁle system,

rather

than

ﬁrst-to-invent

system. In a ﬁrst-to-ﬁle

system, the patent goes to the ﬁrst individual to ﬁle an

application—the invention date is irrelevant. Congress is

considering changing the U.S. to a ﬁrst-to-ﬁle system to

harmonize U.S. patent law with the rest of the world.

Drafting and Filing a Patent Application.

Conducting a Literature Search. If a patent is desired,

the invention disclosure and other technical information

PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY 927