can patent THAT!?!.
Interesting Patent Case
a Peanut Butter and Jelly Sandwich Patentable?
This is the third issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and
ideas. We hope to stimulate you to examine and improve your own IP
practices. This month's issue addresses the feeling some people have
that the patent office is out of control, patenting anything. Feel free to share this newsletter (see copyright notice below)
and to provide feedback by e-mail to: email@example.com
Patent Strike ForceSM
can patent THAT!?!
recent patents have raised eyebrows. These patents, on the face of it,
appear to protect obvious, unoriginal, or mundane "inventions"
and have left many people scratching their heads; is everything
patentable? The issuance of these patents has raised questions about the
competence of patent examiners and the rationality of the patent holders
(who have invested dollars in what "must" be an unenforceable
patent). One example that is making the rounds is US5,443,036
Method of exercising a cat. Although issued in 1995 it is just now
becoming well known. No matter what you think of is validity
(essentially teasing a cat with a laser pointer), it is a must read for
the tongue in cheek specification language. For example, "Release
of trigger 18 interrupts the power circuit and extinguishes the laser
beam, whereupon the cat can return to more traditionally feline time
passing until cat owner 12 re-initiates the laser cat exerciser."
more serious patent that has fallen into the "You can patent
that!?!" category is US6,004,596
Sealed crustless sandwich. Issued in late 1999, this patent was a
sleeper until the assignee, Smuckers' Menusaver division, moved against a local
Michigan firm, Albie's Foods, whom it accused of infringing the '596 patent by
manufacturing and selling a (gasp) peanut butter and jelly sandwich.
Well, not really. And therein lies the real issue.
as presented by the "lay" media, ("Have
you ever made a peanut butter and jam sandwich without crusts? Well,
then, you're in violation of US Patent #6,004,596 you evil-doer, you!")
the patent seems unreasonable,
the fact of the matter is that the patent covers a very specific
manufactured food product that has real commercial value. It is not a
patent that "keeps mom from making PB&J sandwiches for the
kids", as has been suggested. Rather, it keeps Albie's Foods
from, among other things, using the patented method of sealing the
aforementioned PB&J to bid on and win government contracts such as
the following, for school lunch food:
01/26/2001 Expires: 01/26/2002 Buyer: Richard Arnaz, 503-378-2816, firstname.lastname@example.org
Authorized Agencies: See Item Description ALBIE'S FOODS INC. 1534
O'RURKE BLVD. GAYLORD MI 49735 888-824-0700 PROCESSING OF USDA COMMODITY
FOODS Crustless peanut butter & jelly sandwich $0.28/EA Processing
cost $0.28 Guaranteed minimum yield per 10k/lbs of product
A.1 PURPOSE OF SOLICITATION: .... One Contract each will be awarded
for the processing of: (1) string cheese, (2) peanut butter and grape
jelly sandwiches, (3) breakfast portion smoked knockwurst, and (4) lunch
portion smoked knockwurst. The initial term of the Contracts awarded
will be for one (1) year, with an option to extend for up to four (4)
additional one (1) year terms.
ITEM SPECIFICATIONS: D.3.1
Crustless Peanut Butter and Jelly Sandwich (a) Each portion shall be
circular in shape, with crusts removed, frozen and individually wrapped.
(b) Bread for sandwich shall be made from enriched bleached wheat flour.
(c) Filling shall be peanut butter and grape jelly. (d) Each portion
shall provide a minimum of one and one-fourth (1 1/4) servings of
grain/bread and one (1) ounce of meat/meat alternate (National School
Lunch Program guidelines). (e) Each portion will be individually sealed
in food-grade packaging material. (f) Product must be bulk packed in a
manner that prevents damage during transport. (g) Production code must
be printed on master case and each individual portion. [Emphasis added]
I don't know about Mr. Arnaz, but if two competing bids were submitted
to me, I'd go for the circular, crustless and sealed
sandwich any day. And as we see below, the sealed aspect of the
sandwich is a key ingredient in the granting of this patent.
this case is not decided, in fact it has hasn't even started, but the
lessons I draw from it are:
believe everything you read in the press - Reading the first
independent claim of a patent is not enough to know what is
protected and what is not. The protected invention comprises each
and every of the limitations described in the claims. While it may
be fun to poke fun at a patent for PB&J, you need to be more
sophisticated in your analysis than does the Boston Globe.
an idea has commercial value, try to identify protectable aspects
- the cost of a patent is small compared to almost any market. TechRoadmap and your Patent
Attorney can help you understand what you can actually protect. If
it will bring value to your company, go for it.
not talk yourself out of filing your patent - It's easy to start
thinking like the media hype and believe that all patents these days
are worthless junk. It's not true. Even if it were, better the
patent be in your portfolio than not.
an aside - I happen to believe this patent is likely to be held invalid. Not because it is
protecting a PB&J sandwich but because I think there is uncited
prior art that knocks the underpinnings from it.
Patent US2463439, from March 1, 1949, teaches, you guessed it, a device
for making sealed crustless sandwiches.
in the preceding article should be construed as legal advice. TechRoadmap
Inc serves as an interface between companies and their legal counsel.
a Peanut Butter and Jelly Sandwich Patentable?
following request for re-examination was recently filed:
Reexam. S.N. 90/005,949, Mar. 9, 2001, Cl. 426/094, SEALED CRUSTLESS
SANDWICH, Len C. Kertchman, et. al., Owner of Record: Menusaver, Inc.,
Orrville, OH, Attorney or Agent: Robert V. Vickers, Vickers Daniels and
Young, Cleveland, OH, Ex. Gp.: 1761, Requester: Kevin J. Heinl, Brooks
and Kushman, Southfield, MI
in question can be viewed with Adobe Acrobat® at this link US6004596.PDF.
As we have
discussed above, the real issue is not about patenting a peanut
butter and jelly sandwich but patenting a food product that has certain
unique properties. My summary (below) of the '596 claims shows that
Menusaver's food product is certainly not "Mom's PB&J"
and, on giving it some thought, does not deserve to be in the "you
can patent THAT!?!" category.
has developed ("invented")...
crustless sandwich made up of two bread layers with at least one filling
where the edges of the bread have been crimped together and have had the
crusts removed. But also, where you make the crimp seal add periodic,
extra-deep dimples all around and you make sure to keep the filling away
from the crimp. Actually you want to make this sandwich by first coating
the inner sides of both pieces of bread
with a non-absorbing, sealing filling (like peanut butter) and then
adding a layer any oozy filling (like jelly). Remember to keep the jelly
away from the edges of the peanut butter. That way, when you close up
the sandwich and crimp the edges, the two layers of peanut butter touch
and the oozy stuff is encapsulated and never gets to the bread at all.
If you do all these steps you will get a sandwich that will not get
soggy for a long time. If you want to sell these sandwiches, get a
license from us. On the other hand, if you want to leave out some steps
it will not be our invention.
Full text of copyrighted quotation
January 26, 2001
Have you ever made a peanut butter and jam sandwich
without crusts? Well, then, you're in violation of US Patent #6,004,596
you evil-doer, you!
This innovative and unique patent can help you may your very own
sandwich! Here's how: ``The sandwich includes a lower bread portion, an
upper bread portion, an upper filling and a lower filling between the
lower and upper bread portions, a center filling sealed between the
upper and lower fillings and a crimped edge along an outer perimeter of
the bread portions for sealing the fillings therebetween. The upper and
lower fillings are preferably comprised of peanut butter and the center
filling is comprised of at least jelly. The center filling is prevented
from radiating outwardly and into and through the bread portions from
the surrounding peanut butter.''
I tingle when confronted with such awe-inspring INNOVATION. Wow.
Thank Christ for the patent system, or this innovation might NEVER have
been passed on to the rest of humanity.
© Copyright 1999-2001 Mike Warren (mike-warren.com). This content may
be reproduced verbatim in any medium provided this copyright notice and
all content remains unchanged.
US Patent office
Searchable database of all US Patents and, now, published patent
The Patent Cafe - an on-line source of interesting insights into
current IP issues.
EKMS Inc. - a company with whom
we've worked that provides a range of IP management services including
portfolio analysis, deal-making, and process improvement.