Using Patents To Secure Repeat Customers

September 1, 2015

Andrea D. Merin
(as published in IP Law360)

The aftermarket for consumable products can be significant and is oftentimes more profitable than the sales of the corresponding base products. Consumables (e.g., disposable printer cartridges, razor cartridges, single-serving coffee pods and cleaning pads) are extremely valuable because they provide a high-margin, continuous source of revenue, as compared to a nonconsumable of which a consumer only purchases one. The high profit margins for such consumables, however, create an incentive for generic imitations from competitors.

Fortunately, patent protection can help you capture your aftermarket and deter competitors from manufacturing generic consumables. For example, to capture the ink stick market for ink jet printers, Xerox developed a vast patent portfolio that includes patents on the ink stick itself as well as on the printer and a combination of the printer and ink stick. Xerox even has protection for the ornamental design of the ink stick and the chemical composition of the ink. Similarly, the Gillette Company has a patent portfolio that includes patents covering its disposable razor cartridges as well as the corresponding razor.

So, how can you, like Xerox and Gillette, build a diverse patent portfolio to capture your consumable aftermarket? First, ideally, through creative engineering, you want to design a consumable that is patentable itself or includes a patentable feature that permits it to be used with the nonconsumable. For example, consumables have been designed for use with printers, copy machines, coffee brewers, beverage makers, razors, pens and cleaning appliances.

Next, you want to obtain patent protection for your consumable, so that competitors will be precluded from manufacturing or selling a product that fits into your nonconsumable. It is important to note that having a patent on your consumable does not necessarily mean that you can make or sell that product. Patents give you the right to prevent others from making, selling and using your product. However, in some circumstances, features of your consumable might be covered by others’ patents, and those patents might prevent you from making your product. It is important to do research before your product enters the marketplace (e.g., during the design phase) to determine whether this may be the case.

To provide the strongest protection for your consumable, you should include two different types of patents in your portfolio: utility patents and design patents. Utility patents provide protection for the structure and function of your product. The claims of a utility patent, which appear at the end of your patent, define the extent of the protection of your consumable, or what you can prevent your competitors from doing. Utility patents typically offer a broader form of protection, but are harder and more expensive to obtain. Design patents cover the ornamental design of your consumable (e.g., the appearance of your razor cartridge or ink cartridge but not its function). They are faster and less expensive to obtain than utility patents. Unlike utility patents, design patent protection is defined solely by the figures included in the patent. Specifically, solid lines in a figure define the claimed design (i.e., the scope of your protection) and dashed lines in a figure define either an unclaimed design or the environment in which your claimed design is used.

For more robust protection in a utility patent, you should include many claims of varying scope. For example, start with broader claims directed to the overarching way in which your consumable functions and is structured (e.g., a claim directed to a razor cartridge having a body, a guard member and one or more blades) and then add narrower claims to cover particular details about the consumable (e.g., the razor cartridge, as described in the previous example, having a rectangular shape). In addition, consider including claims that would cover a modified structure that you could envision being implemented by a potential competitor trying to copy, or even slightly modify, your consumable (e.g., instead of including a claim directed to a razor cartridge having three blades, include a claim directed to a razor cartridge having at least three blades). You should also consider claims in one or more patents directed to different aspects of the consumable and/or nonconsumable.

You could also include claims directed to the combination of your consumable and an element of the nonconsumable or the nonconsumable itself (e.g., a claim to the ink cartridge in combination with an interlock or the ink cartridge in combination with the printer). Depending upon how the claims are written, combination claims can be very powerful in that they can cover both (1) use of a competitor’s consumable with your nonconsumable (e.g., when your razor is being used with a competitor’s razor cartridge ) and/or (2) use of your consumable with a competitor’s non-consumable (e.g., if your razor cartridge is being advertised for use with your competitor’s razor). It is important to make sure that combination claims are carefully drafted; otherwise the repair doctrine may apply, which exempts a user and seller from infringement.

Finally, consider including patents covering several variations of your consumable. This can be accomplished by including multiple embodiments or illustrative examples in the same patent, or by having several patents, each of which includes only one illustrative example. For example, instead of just describing a razor cartridge with a body, a guard member, and three blades, you should include several examples of the razor cartridge, each illustrating different features that the razor cartridge may have (e.g., a first razor cartridge with multiple blades, a second razor cartridge with multiple blades and a moisturizing strip, a third razor cartridge with multiple blades and a guard member, any of the above razor cartridges with a protective cap, or any of the above razor cartridges with a razor).

For robust protection in a design patent, consider including patents having different features and combinations of features in solid lines and in dashed lines (i.e., claim different features and combinations of features in each patent). For example, a first patent may include figures of a razor and razor cartridge (both in solid lines) whereas a second patent may include figures of only the razor cartridge (also in solid lines). This approach can be particularly helpful in preventing your competitors from copying or slightly modifying your consumable. For example, if only the blades of your razor cartridge were shown by a solid line (i.e., were the claimed feature), but the shape of the cartridge was in a dashed line, you would be able to stop a competitor from copying your consumable by only varying the shape of the razor cartridge.

You should also consider obtaining a patent on the nonconsumable itself. Again, and similar to your consumables, consider obtaining design and utility patents for your nonconsumable. Also, consider including claims of varying scope and claims directed to the nonconsumable in combination with the consumable.

By using these tips to build a strong patent portfolio, your competitors will think twice before entering your market space.