Simply stated, flavors and fragrances are patentable, but that’s only half the story.  A little background on patents is warranted before we explore the patentability of flavors and fragrances

Patent law protects “new and useful processes, machines, compositions of matter, and new and useful improvements thereof.”  Patent protection is granted to inventions that are useful, novel and non-obvious.  Useful means the invention provides some identifiable benefit.  Novel means that the invention hasn’t been done or disclosed before.  Non-obvious means that the invention would not be obvious to one skilled in the art.  If those hurdles are overcome, and a patent is granted, the patent gives the patent owner the ability to prevent others from making, using, selling or importing the invention for a period of 20 years from filing an application in the case of a utility patent.  In exchange for this limited monopoly, the process of obtaining a patent requires the inventor to fully disclose the invention, including, for example, the process by which it is made and the formulation.  Once the patent expires, everyone is free to practice the invention, a prospect which is quite likely, given the required disclosures of the patent, in the event the invention is successful.

With this brief primer in mind, we reiterate that both flavors and fragrances are patentable.  US Patent No. 7,364,766, Toasted Flavor Additive and Method of Making, Frito-Lay N.A., exemplifies a typical flavor patent; while US Patent No. 6,861,031, Fragrance Material, I.F.F., best demonstrates a fragrance patent.  As noted above, however, this is only part of the story of flavor and fragrance protection.

Fragrances:

Perfume formulations may be patentable so long as the formulation satisfies the statutory requirement of novelty and non-obviousness.  However, most perfumers disfavor patenting formulations because of the requirement that the formulation be fully disclosed in exchange for a relatively short patent life (i.e. the perfume would only have a maximum of 20 years of exclusivity and would then be confronted with copy-cat fragrances).  As a result, fragrance manufacturers often utilize alternate approaches.

First and foremost, fragrance manufacturers can patent one, or more than one, of the individual fragrance molecules that comprise a perfume formulation, and then use the patented fragrance molecule(s) exclusively in the patent holder’s formulations.  The preferred business model is for the patented molecule not to be sold to others, nor is the patent licensed to anyone.  Such patented fragrance molecules are referred to as “captive odorants”, as no one other than the patent owner may make, use or sell the captive odorant.  Fragrance manufacturers expend significant resources (i.e. time and money) in developing new captive odorants.  The captive odorant may replicate the fragrance of a particular natural oil, but also may have unique properties, such as, for example, the ability to adhere to fabric (for laundry detergents), or to give off a certain fragrance as in a manner that its corresponding natural oil cannot.

Since the production and use of the captive odorant is limited to the patent owner, the inclusion of a captive odorant in a perfume formulation effectively extends patent protection from the single captive odorant to any formulation that contains the captive odorant.  The replication of any formulation containing the captive odorant is impossible without infringing the patent to the captive odorant.

When discussing the protection of fragrances, it is also necessary to consider other modes of protection.  For example, most perfume manufacturers rely on trade secret protection for their fragrance formulations, rather than patent protection.  Trade secret protection is not subject to the 20 year time limit of patent protection, and remains in effect so long as the invention remains a secret.  However, with the aid of modern analytic techniques, such as gas chromatography-mass spectrometry (GC-MS), it is relatively easy for others to analyze the composition of complex formulations, and thus re-create a formulation using commercially available raw materials, effectively side-stepping any trade secret protection.

Alternatively, the ornamental aspect of a bottle in which a perfume is packaged may be protected.  Design patents cover the ornamental designs of objects that have practical utility.  An object with a design that is substantially similar to the design claimed in a design patent cannot be made, used, copied or imported into the United States for a period of 14 years from the date the design patent is granted.  The copy does not have to be exact for the patent to be infringed. It only has to be substantially similar.  Once the design patent expires, of course, anyone is free to make, use or copy the design.

Furthermore, fragrances can be protected with plant patents.  Patent law specifically provides for the protection of any distinct and new variety of plant that is invented or discovered and asexually reproduced for a period of 20 years from the date on which the application for the plant patent was filed.  It may be possible, therefore to obtain a plant patent for a newly discovered plant that is the source of a natural oil, provided the plant can be asexually reproduced.  Once the plant patent expires, anyone is free to make use or sell the plant that was the subject matter of the patent.

Finally, the most common and desirable protection for fragrances is to develop a protectable brand that transcends the actual fragrance.   For example, Chanel No. 5 will be protectable as a brand forever, and, even if a competitor were to have the exact fragrance, it’s still not Chanel.

Flavors:

Many food products are characterized principally by a sensory property like taste.  Such food products include, for instance, dressings, sauces and drinks.  Patent protection may be available for a product based on its taste.  Taste is no different to other attributes of a food product, such as shelf life or digestability, each of which may be patented.  Patents claiming taste profiles have been granted.  For example, US Patent No. 6,180,155, Sweetener Having An Improved Sucrose-Like Taste And Process For The Preparation Thereof And Use Thereof, Nufinova, claims a method for modifying the taste profile of an artificial sweetener to resemble the taste of sucrose.

Given the subjective nature of taste, a major hurdle in obtaining a patent for a product based on how it tastes is compliance with the statutory requirement that the particular taste be adequately described and reliably tested.  Such compliance can be made possible by, for example, using specially trained persons or analytical instruments to characterize the taste by standards for each important taste component, prioritized in level of importance to legally define the taste invention and its scope.

As discussed above, trade secret protection is also a desirable alternative means to protect flavors and tastes.  For instance, the formulation of Coca-Cola is a closely held trade secret.

Finally, flavors, just like fragrances, may be protectable in other ways, such as by obtaining a trademark.   Remember, a hamburger is just a hamburger, but a Big Mac is just that, a Big Mac.

Patents provide a mechanism to protect flavors and fragrances, preventing others from making, using and selling the patented subject matter, but a patent’s monopoly comes at a price:  full disclosure of the invention and giving the invention to the public after the patent expires.

Do you have a question about how to best protect a flavor, fragrance or other invention?  The McHattie Law Firm, LLC can help – info@mchattielaw.com.

 (Paul Burnett and Chris McHattie)