Test your understanding

For many years all of Pfizer’s Robitussin cough suppressant syrups and gels have been uniformly colored a dark shade of cherry red. Pfizer recently decided to use various shades of red to color these products, and claims the implementation of this idea constitutes a patentable invention. If you were the Examiner of Pfizer’s patent application would you grant Pfizer a patent for this “invention”? If not, what would be the bases for your denial?

Pfizer’s idea to vary the shades of red with which it colors its Robitussin cough suppressants may be part of an effective marketing strategy, but it satisfies none of the basic requirements of patentability. Undoubtedly there are other cough suppressants in the market that are colored various shades of red, and Pfizer’s idea reduced to practice, therefore, is not novel. Likewise, the idea is obvious as drug manufacturers commonly color their products with various shades, typically to enable consumers to distinguish among their other products, and the products of other manufacturers. Moreover, while the varying shades may attract the attention of consumers, Pfizer has not established that they provide any additional utility to their therapeutics.

While searching for old patient records in a hospital basement storeroom, a radiologist finds a supervoltage X-ray tube used in the 1940s. He recalls that these tubes were used in electron beam therapy for treating deep tumors, but that this technology’s efficacy was limited because it was difficult to modulate the energy delivered from the tubes. He tinkers with the tube and develops an improved version of it with which one could more effectively modulate the delivered energy. Radiation therapies have advanced dramatically since the 1940s, particularly with the development of proton therapy now commonly used. Nevertheless, the tinkering radiologist believes he should be able to acquire a patent for his improved X-ray tube. You are the lawyer he hired to prosecute his patent application. Does the invention satisfy the prerequisites for patent protection, and would you advise him to pursue the application?

The fact that a technology has become obsolete does not necessarily indicate that improvements of it are not patentable. For example, while today virtually nobody tills a field with a horse-drawn plough, if I come up with an invention that makes this plough work more effectively, I should be granted a patent for it as long as it does not embody obvious, or previously known, information. 

The same is true for the radiologist’s improved X-ray tube. The fact that it is unlikely radiologists today would use an improved tube for an obsolete therapy does not indicate that it is not useful. It could be useful if a radiologist, for whatever reason, needed to employ the obsolete treatment technology. Likewise, the improved horse-drawn plough could be useful if my tractor breaks down, or there develops a world-wide shortage of diesel fuel.

Perhaps the radiologist’s X-ray tube improvement was not pursued earlier because of the development of new radiation therapies. Regardless, if the radiologist’s improvement was not anticipated by another, as found in a similar product or even a published discussion of it, the improvement should be considered both new and non-obvious.

The radiologist would need to balance the expense of prosecuting the application with the royalty stream he expects his patented improvement to generate. If it is unlikely anyone, other than perhaps a medical museum, would be interested in purchasing his improved component of an obsolete technology, his attorney should advise against prosecution unless the radiologist is willing to spend about $10,000 for a patent registration certificate (without frame) to hang on his office wall. 

An industrial designer creates a ceramic handle in the shape of a dragonfly for the lid of a cooking pot. She believes it is useful because it enables someone to lift the lid off a boiling pot without burning one’s fingers on the ceramic handle, which is a poor conductor of heat. She asks a patent attorney to prosecute an application for a utility patent for her dragonfly handles. If you are representing her would you follow her suggestion or recommend a different approach for IP protection of these handles? 

There is nothing new about manufacturing pot lid handles made of poor heat conducting materials as a means to prevent burnt fingers of cooks. The designer’s ceramic handles may be useful in that they provide this benefit to a greater extent than, for instance, copper handles, but her handles were far from the first to offer this advantage. So, a utility patent is out of the question. 

Her handles could obtain a 15-year term design patent, precisely because they are not inherently useful, but rather an ornamental addition to a useful product. A ceramic sphere as a lid handle might not be protectable because most likely ceramic spheres have already been used as pot lid handles. Assuming, however, that her ceramic pot lid handle is the first in the shape of a dragonfly, it would satisfy design patent’s requirements of novelty, non-obviousness, and non-functionality.      

As dragonfly shaped handles are not inherently useful, she also might simultaneously obtain a copyright for them, as a sculptural works. This would offer long-term protection for her designs against unauthorized others’ exact or substantially similar copies of them.