Patent application to imprint images and messages on foods rejected by Patent Office

Last month the Patent Office released a decision concerning a curious application.  Filed by Proctor & Gamble, the application sought to protect foods with imprinted images which, in conjunction with a separate message (such as a TV ad), would provide an interactive experience for consumers.  Claim 1 was as follows:

     An article of commerce comprising:
          (a) an edible substrate;
          (b) an image disposed upon said edible substrate;
          (c) a message associated with said image, wherein said message links the image to an interactive
          component; and
          (d) optionally a container for containing said edible substrate.

Essentially, P&G wished to patent a marketing technique that would add “value beyond the aesthetic value of the image” thus providing “enhanced value to the consumer”.  The application gave the example of questions imprinted on potato chips, with answers to these questions on the chip packet or given in some other way (such as via a TV ad).

The examiner objected to the application on the basis that the alleged invention was not a manner of manufacture within the meaning of section 18(1)(a) of the Patents Act.  In the examiner’s opinion, the alleged invention merely presented information with no specific link between the imprinted image and the interactive component, and they directed a hearing.

The application lapsed after the matter was set down for hearing and P&G indicated they would not attend or file written submissions.

Nevertheless, the Commissioner’s Delegate – in what was essentially a straight forward application of the NRDC and Grant cases – upheld the examiner’s conclusions.  The Delegate stated that if the application was revived, it would be refused since the effect of claim 1 would not result in any physical phenomenon or effect within the meaning of Grant.  Legally speaking, this case is not groundbreaking. However, it is interesting for a number of reasons, notably:

  1. patents are being sought in the marketing / consumer goods space;
  2. “enhanced consumer experience” is unlikely to be patentable; and
  3. the Patent Office appears to be taking a fairly strict approach, that business method patents will only be patentable if implementation of the method has a physical manifestation or effect.

While P&G’s patent application has been rejected, it does point to some interesting developments in marketing food products.  Clearly we have moved on from the days when the only messages in food came from canned spaghetti in the shape of letters of the alphabet!

About the Author

James Ellsmore
James is a senior associate with King & Wood Mallesons' Intellectual Property team in Sydney. James assists clients to resolve intellectual property disputes, with a particular focus on patents, pharmaceuticals and the life sciences. He has acted for a variety of clients in matters concerning patent infringement and revocation proceedings in the Federal Court of Australia, patent opposition proceedings before the Commissioner of Patents, and matters arising from patent licence and technology agreements. James also has experience in the preparation of commercial, R&D and IP agreements for leading universities, research organisations and pharmaceutical companies. He also advises clients on regulatory issues affecting clients in the industrials, consumer and health sectors.
View all posts by James Ellsmore

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