When Food Science Becomes Intellectual Property

Moments of inspiration and inventive breakthroughs happen on a regular basis in the food science industry, but many food scientists either don’t realize or are not sure whether their ideas might be patentable. The question of patentability and what factors a company or individual should consider leading up to the decision to file a patent can be complicated. However, it is possible to obtain a patent on a food science- related invention.

With a surge in patent issuance due in part to the recognition that intellectual property (IP) protection can be a highly lucrative investment, people are by and large more patent savvy than they used to be—and that needs to include professionals in the food science field as well. This article provides a general overview of the patent process and highlights some issues particularly germane to food science, including some ideas on how to maximize the commercial significance of such inventions.

A patent discussion

As a general matter, an invention related to food science is like any other useful invention and it is possible to obtain a patent. The fact that the invention relates to food science does not, in and of itself, prevent an inventor from obtaining a patent on his/her invention. Many food scientists don’t seem to realize or appreciate that what they have produced or created may actually be an invention. This is true, to some extent, with all inventors, but for some inexplicable reason, food scientists and the food industry frequently don’t seem to identify what intellectual property they may have created. Instead, either in the rush to market or just because the inventor might themselves believe their invention is obvious, they do not file patent applications on their inventions.

In the United States, two primary limitations on patent issuance include whether or not the invention claimed is new and whether the invention would have been obvious to one of ordinary skill in the relevant art. Inventors, by their very nature, are those of extraordinary skill in the art, but, unfortunately, one of the initial obstacles to filing a patent is occasionally the inventor themselves. Because an invention was obvious to them, they may assume that it would have been obvious to one of ordinary skill. This is often not true. If there are not systems in place to encourage scientists to disclose potential inventions, intellectual property will either go undeveloped or end up dedicated to the public.

Proceeding with patents

Once a potential food science invention has been identified, the next step can depend on a number of factors. Some of those factors include: whether or not a patent application can be filed in countries outside the United States; the fiscal capabilities of the entity/corporation filing the patent application and the importance of creating proprietary rights in the invention; whether or not the potential invention is capable of being kept a trade secret; and the scope and content of the prior art.

If there has already been a public disclosure, offer for sale, public use or sale, in most countries, the ability to validly file a patent application will already have been lost. Most foreign countries require that a patent application be filed before any exploitation or disclosure of the invention. In the United State,s one can file a patent application within one year of such activity. If the United States is the only country in which an applicant wants to file a patent application, or there has already been a disclosure, filing an application in another country would be extremely limited. A preferred course of action would be to file in the United States only and request that the application not be published until a patent ultimately issues. While the United States Congress has recently considered changing the patent law to mandate that an application that is filed be published 18 months after its earliest filing date, currently, if the applicant files a non-publication request at the time the application is filed, the government will not publish the application.

Why wouldn’t one want to have the application published? First, the primary benefit of publishing the application is to enable the owner of the application to possibly obtain some amount of damages for a time prior to actual allowance of a patent. However, this prospect is very remote and subject to numerous conditions. One condition is that the owner of the patent application successfully obtains a patent and successfully enforces it against the party. This is often not likely and almost always speculative. In most instances, including when a party may know of an alleged infringer, the potential benefit is small. Second, if the application is published, after one year that application itself will become prior art to the applicant’s own work, even if it has not yet been otherwise disclosed, exploited or publicly used. Third, once the patent application is published, the correspondence between the applicant and the patent office becomes public. A potential infringer would be able to readily see that an application may be meeting stiff resistance by the examiner such that it may never result in a patent. As a result, a potential infringer who otherwise might never have entered the marketplace may enter despite the fact that a patent application potentially covering the product is pending. This creates a competitor in the marketplace where one there may not have been one before.

Another consideration through the process is that the applicant often amends the claims of an application during prosecution of the patent application. Since the communication between the patent applicant and the patent office is open to the public, when the scope of the claims gets narrowed during prosecution of the application, a potential competitor can readily observe the status of the claims, design around them, and realize that the pending claims no longer cover their proposed product. As a result, the potential competitor may choose to enter the marketplace. Not publishing the data keeps such information from potential competitors and creates significantly greater business uncertainty for them. As a result, there is less likelihood competitors will enter the market while the application is pending.

Moving forward

Of course, supposing an applicant has adequate time prior to the expiration of the one-year timeframe for filing a patent in the United States or, preferably, if the invention has not been disclosed in a manner to bar foreign filing, an applicant should conduct a thorough patentability evaluation. In this way, one can make a series of important decisions in a more informed manner. This knowledge enables the applicant’s patent attorney to formulate a better opinion on the expected scope of the claims. Once this information is communicated to the client, the client is in a better position to evaluate the business cost/benefit of filing a patent application.

With the expected scope of the claims available, if the applicant and the attorney are of the opinion that the prior art does not disclose or suggest the broad concept of the invention and, as a result, broad claim scope might be obtainable, the applicant may choose to file in foreign countries, despite the costs and the fact that the application will be published.

It is a more difficult question when the scope of the claims likely will be narrow. Even if the scope of the claims appears likely to be narrow, the claims may nevertheless be of commercially significant scope. This may occur when a product is distributed internationally or is a significant product in the company’s commercial business (and there is not a substantial prospect of keeping the invention a trade secret). In such instances, it may still be beneficial to file the patent application internationally and have the application published in the United States. However, in most instances, filing the application only in the United States and filing a request that the application not be published is the more prudent course of action. Again, this creates business uncertainty for competitors.

Food science-related patents can be obtained, but it is important to realize that the United States patent examiners often reject such cases in today’s patent climate. It is also important to maximize the value of the intellectual property asset in both the near and long term. As discussed above, one such way to maximize the real world commercial value of the food science invention involves filing the invention as a patent application and requesting that the invention not be published. In this manner, one creates business uncertainty with competitors, allows flexibility to keep the subject matter of the invention a trade secret if ultimately unsuccessful in obtaining a patent, and may prevent the invention from becoming prior art to any future inventions. The advantages are significant enough to warrant careful consideration prior to filing both in the United States and in foreign countries.

Todd Van Thomme is a partner with Price, Heneveld, Cooper, DeWitt & Litton LLP (priceheneveld.com) in Grand Rapids, MI. His practice covers the entire intellectual property lifecycle, with science specialty areas including pharmaceuticals, nutraceuticals, food science, polymer chemistry and Internet technologies. Van Thomme is the co-president for the Association of Patent Law Firms (APLF), an international association of law firms that devotes a majority of their practice to patent law, and is also a member of the Institute of Food Technologists.

Web Resources:

Guide to Patenting and USPTO Patent Applications

United States Patent and Trademark Office