Patenting for Inventors Ep. 180: Can You Patent a Smell?
Can You Patent a Smell? What Inventors Need to Know About Protecting a Scent
Some smells are instantly recognizable: a new car, sunscreen, Play-Doh, a hotel lobby. So if you create a unique scent, can you protect it? In Episode 180 of Patenting for Inventors, host and registered patent attorney Adam Diament, Partner at Nolan Heimann LLP, answers that question and explains why the short answer is usually no, at least for a smell by itself.
Adam walks through the three areas of intellectual property that can come into play. Patents can protect the technical side of a scent, such as a chemical composition, a manufacturing process, or a device that releases fragrance over time, but not the experience of smelling it. Trade secrets can protect a fragrance formula for as long as it stays secret and is properly safeguarded. Trademarks can protect a scent in rare cases, when consumers recognize it as pointing to one company and it isn't functional.
Adam also explains the layered strategy many scent-based businesses use, and why inventors should be careful about disclosing a formula, sharing samples, or going to market before deciding how to protect it. He also covers how international rules can complicate things.
If you're developing a fragrance, a scent-delivery product, or any invention where the details are part of the value, this episode will help you ask the better question: what part of my invention creates value, and how do I stop competitors from copying it? To talk through your own invention, explore our practice areas or contact Adam directly.
Patenting for Inventors Ep. 180:
Podcast Transcript:
Hello, and welcome to the Patenting for Inventors podcast. I’m your host, Adam Diament, a registered patent attorney and partner at Nolan Heimann in Los Angeles, California.
Today’s question sounds funny, but it is a real intellectual-property question:
Can you patent a smell?
Think about a smell that you recognize immediately. Maybe it is the smell of a new luxury car, sunscreen, Play-Doh, Vicks, or a hotel lobby. Sometimes a smell can remind you of a particular product or even a particular company.
So, if you create a unique smell, can you patent it?
The short answer is usually no, at least not as a smell by itself. But the complete answer is more interesting because smells can potentially involve three different areas of intellectual property: patents, trademarks, and trade secrets.
Let’s start with patents.
A patent protects an invention. That usually means something functional, such as a machine, a process, or a chemical composition.
For example, imagine that you invent a new chemical mixture that produces a particular fragrance. Or maybe you invent a new way to release a scent slowly over several weeks. Or perhaps you develop a cheaper and more stable method for manufacturing a fragrance.
Those inventions might be patentable.
But notice what you are actually protecting. You are not protecting the personal experience of smelling the fragrance. You are protecting the technical details that create the fragrance, such as:
the chemical ingredients;
the amounts or concentrations;
the manufacturing steps; or
the device or process that releases the scent.
A patent application has to explain the invention in technical terms. You cannot simply write, “This smells fresh, warm, and nostalgic.” That may describe how the scent feels, but it does not tell the Patent Office how to make it.
You would need to identify the ingredients, explain how they are combined, and provide enough information for someone skilled in the field to make and use the invention.
For example, saying “a scent that reminds people of summer” is probably too vague. Saying “a composition containing chemicals A, B, and C in specified ranges that produces a stable fragrance when applied to fabric” is much more like a patent claim.
There is another important tradeoff. When you apply for a patent, you generally have to disclose the invention to the public. The patent eventually publishes, so competitors can read how your composition works.
During the patent term, they may be prohibited from making or using the patented invention. But once the patent expires, the public can generally use the disclosed invention.
That is one reason many scent-based businesses do not rely primarily on patents for their formulas.
Instead, they often use trade-secret protection.
A trade secret is valuable information that is not generally known and that a company takes reasonable steps to keep secret. A secret fragrance formula can be a trade secret if the company protects it properly.
That might involve:
limiting who can access the formula;
using confidentiality agreements;
storing the formula securely;
separating the formula into different parts; and
making sure employees and contractors understand that it is confidential.
Unlike a patent, a trade secret does not require registration or public disclosure. It also does not automatically expire after a set number of years.
A trade secret can potentially last forever, but only as long as it remains secret.
That is the major risk. If someone lawfully figures out the formula through independent research or reverse engineering, trade-secret protection may not stop them. And if the formula leaks because the company failed to protect it, the company may lose its trade-secret rights.
So patents and trade secrets involve opposite strategies:
A patent says, “I will publicly disclose the invention in exchange for legal protection for a limited period.”
A trade secret says, “I will keep the information confidential and protect it as long as it remains secret.”
Now let’s talk about trademarks.
Most people think of trademarks as names and logos, such as the name of a company or the design of a logo. But trademark law can also protect other things that identify the source of a product.
These are sometimes called nontraditional trademarks. They can include sounds, colors, product shapes, and, in limited circumstances, scents.
A scent could theoretically function as a trademark if consumers recognize that scent as identifying one particular company.
For example, imagine a company sells office chairs that all have an unusual scent. The scent is not needed for the chairs to work. Over many years, the company advertises the scent, uses it consistently, and customers begin to associate it with that company.
In theory, the company might argue that the scent is acting as a brand identifier.
But the requirements are very demanding.
The company would need to show that consumers actually connect the scent with that company. It is not enough to show that the scent is pleasant, memorable, or unusual.
The company may need evidence such as:
consumer surveys;
many years of consistent use;
advertising that emphasizes the scent; and
proof that customers recognize the scent as coming from that particular source.
There is also a major limitation called functionality.
A trademark cannot give one company a permanent monopoly over a feature that provides a practical benefit to the product.
For example, if a scent makes soap smell clean, masks an unpleasant odor, or is simply part of a perfume product, the scent may be considered functional. If it is functional, it generally cannot be protected as a trademark.
That is why scent trademarks are rare. They are more likely to be considered when the scent is unexpected and unnecessary.
A scent for perfume is probably functional because the purpose of perfume is to provide a fragrance. But a scent for an unrelated product, such as a particular type of office supply, might have a better chance if consumers associate it with one company and the scent serves no practical purpose.
Even then, registration and enforcement can be difficult.
One example of a scent that is tradeamarked, is the scent for playdough.
So what should an inventor do when creating a new scent-based product?
Usually, the best strategy is to consider several forms of protection at the same time.
For example, you might:
file a patent application on a new chemical composition;
file a patent application on a new scent-delivery device;
keep the precise formula or manufacturing details as a trade secret; and
build a brand around the scent through consistent marketing.
That is called a layered strategy. Instead of looking for one perfect form of protection, you protect different parts of the business in different ways.
Here is a simple example.
Suppose you invent a car air freshener that releases a scent in tiny amounts over six months.
You might seek a patent on the device that controls the release. You might keep the exact fragrance formula secret. You might use the same scent in all of your products and advertise it consistently so customers associate it with your company.
The patent would protect the technical mechanism. The trade secret would protect the formula. The branding would help customers recognize the source.
There is also an important warning for inventors: do not casually disclose a scent formula before deciding how to protect it.
Public disclosure can create problems for patent rights. It can also destroy trade-secret protection.
Disclosure can happen in obvious ways, such as:
selling the product;
posting the formula online;
publishing technical details; or
showing the invention at a public event.
But it can also happen during private business discussions. For example, you might give samples to a potential manufacturer, investor, or business partner without having a confidentiality agreement in place.
Before making those disclosures, talk with an intellectual-property professional and consider using a confidentiality agreement.
After all, smell travels faster than lawyers.
International protection also creates additional complications. The United States may treat certain nontraditional trademarks differently from other countries. Patent rules for chemical compositions, disclosure, and novelty can also vary from country to country.
If you plan to sell the product internationally, you should think about that strategy before making public disclosures. Otherwise, you may preserve rights in one country while losing them somewhere else.
So, can you patent a smell?
Usually, you cannot patent the sensory experience of a smell by itself. But you may be able to patent the chemical composition, the manufacturing process, or the device that produces or releases it.
You may also be able to protect the formula as a trade secret. In rare cases, a scent may function as a trademark if consumers recognize it as identifying one company and the scent is not functional.
The bigger question is not simply, “Can I patent this smell?”
The better question is:
“What part of this invention creates value, and what is the best way to stop competitors from copying it?”
Sometimes the answer is a patent. Sometimes it is a trade secret. Sometimes it is branding. Often, the strongest strategy combines all three.
That’s it for today’s episode. I’m Adam Diament. If you need help filing a patent application or protecting other intellectual property, give me a call at 424-281-0162.
Until next time, keep on inventing!