Invention Detectability and the Quid Pro Quo
This is a transcript from a section of the course “Patents 340 – Invention Rating Checklist,” which is available here at IP.Education.
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The Quid Pro Quo – Tropicana Patent
There is a very important exchange that you make with the government when you file for a patent.
You agree to give up your trade secrets and you might – you might – get a patent.
Let’s look at an example.
Tropicana got a patent on fresh squeezed orange juice.
At first glance, that sounds ridiculous.
But let’s dig into it.
In the 1990’s, all orange juice was from concentrate.
Oranges would be picked, they would concentrate the juice, and it was reconstituted all year long to provide bottled orange juice.
Tropicana started research to figure out how to make fresh squeezed orange juice.
It turns out that fresh squeezed orange juice is much more difficult.
There are several varieties of oranges, and they ripen at different times.
Also, each variety has a different sugar content, color factor, and acidity.
The difficulty is harvesting the right varieties at the right time, then blending the juice so that the juice is consistent all year long.
Tropicana spent a lot researching this problem, and their patent reflects it.
Let’s look at the patent.
Here’s the issued patent.
As we scroll down, we see all of the charts and graphs from their research.
These show the progression of color, sugar, and acidity over time for several different orange varieties.
In the body of the patent, there are several tables of test data that Tropicana had developed.
By reading the patent, a competitor can figure out what Tropicana is doing.
They know the varieties that Tropicana is buying, the ratios of one variety to the next, how they are blending their juice, their target taste profile, and all kinds of sensitive information.
This type of research and development is some of the most secretive and highly guarded data that they have.
Yet Tropicana put it in a patent for everyone to see.
In exchange, the Patent Office granted their patent claims.
But look at this claim.
“A not from concentrate orange juice composition comprising a blend of:
“At least about 1 percent by weight of a stored orange juice…
“Up to 99 weight percent of a very early season fresh orange juice”
Think about that claim.
Could you EVER detect that an orange juice has at least 1 percent stored orange juice?
In order to figure out that a competitor was infringing, I need to go to the store, buy a gallon of orange juice, and take it back to the lab.
With all the lab equipment in the world, I could never detect that my competitor had 1 percent stored orange juice in their product. Never.
Oh yeah. What happened to this patent?
Evidently, Tropicana tried to do some enforcement with their patent and someone put them in reexam.
Reexamination is a process whereby you can have someone else’s patent re-evaluated after it issues.
As a result of the reexam, Tropicana disclaimed all the claim.
That is just a fancy way of saying that the threw in the towel and gave up on the entire patent.
This is a great example of two things.
The first is a claim that is completely undetectable.
I could never, ever enforce that claim.
Therefore that claim is worthless.
The second is that this patent shows how a patent can have a very negative value to the patent holder.
In this case, Tropicana gave up their top secret plans to launch a fresh squeezed orange juice product and in exchange, they got nothing.
In fact, what they got was worse than nothing.
They educated their competitors on exactly how to make their product.
And their patent was completely ineffective to stop their competitors from stealing their hard work.
Remember that every time you file a patent, you are doing the same bargain.
You are giving up your most valuable research – and you are hoping to get something valuable.
This is just one example of why figuring out how to protect your invention is extremely difficult.
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