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Jessica Chesher

Managing Editor

Innovation eReview
Having Fun With Patents
by Eugene R. Quinn, Jr., Associate Director, NYS Science & Technology Law Center

Bi-nestable margarita glass apparatus and method
US Patent No. 5,842,590 
Issued December 1, 1998


Chile rellenos and process of making the same
US Patent No. 4,208,435
Issued June 17, 1980

Folks, its Happy Hour in the in the “Having Fun With Patents” section this month, and we’ve got two-for-the-price-of-one! We don’t want you to think that certain members of the Innovation e-Review editorial board have Margaritas on the brain or anything, not at all. It’s just that there is much we can learn from these two patents, and, umm, well, did we mention that Cinco de Mayo was this month, and that Cinco de Mayo celebrations are becoming increasingly popular in the United States? Well, they are, and far be it from us to ignore that trend, so, please pass the salt.

First, why would someone want to get a patent on a margarita glass, particularly this margarita glass? The margarita glass represented by the ‘590 patent comes in two pieces. You take the bowl top and insert it into the stem of the bottom, thus creating a single unit ready for serving. This, however, begs the question about why patent the invention. Margarita glasses at most establishments are made of one piece of glass, and this does not seem to offer a benefit substantial enough to warrant the expense of obtaining a patent. Nevertheless, there could be a legitimate reason for obtaining such a patent. The key is to ask what you plan on doing with the patent. If you are seeking to supplant what is already available on the market, then you must have come up with an invention that is enough better to warrant consumers to forgo these other alternatives, otherwise obtaining a patent is usually not a wise move. Having said that, there are still other reasons to obtain a patent.

When you file a patent application you can immediately place the words “patent pending” on your product. This is true even if you just file a provisional patent application. This can grant you a nice marketing advantage. If and when a patent is issued, you can then advertise that your product is patented and place the patent number on the product. If you owned a tavern or Mexican grill how many margaritas do you think you could sell if you could advertise them as coming in your patented margarita glass? Notice, you don’t have to ever intend on enforcing your patent to make the investment worthwhile. You do, however, absolutely have to have a game plan.

With respect to the bonus patent, U.S. Patent No. 4,208,435 for the chile rellenos recipe, can you patent a recipe? Sure, why not? A recipe is just a method of making, which is certainly patentable. The food itself is a composition, which is also patentable. A quick search of cooking books probably tells you that this recipe should not have been patented because it is either not new or is obvious. Nevertheless, the expense of the patent could make sense if you own a Mexican restaurant. Another interesting thing about this patent is that claim 3 is a product by process claim, which means the chile rellenos is protected itself, but only when made by the method described. Product by process claims are easy to write, but notoriously weak, just because the resultant product is only protected in so far as the method is employed. Normally one would not want to rely on a product by process claim unless there is no other way to obtain the claim coverage. But in this case, where the patent is likely not to be enforced and useful only for marketing purposes, a product by process claim may well be enough to get the bang for the buck.

The moral of the story is that intellectual property offers a tool that can be used to create revenue. Sometimes you obtain a patent to monopolize, sometimes you obtain a patent to license others and sometimes you obtain a patent to create unique marketing opportunities. The only “wrong” patent is one obtained that is useful solely for marketing purposes and you expect to enforce it against others. Such a decision shows a lack of a game plan.

The first round is on us. Cheers and sauld!

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