New Zealand: Clever ways to patent your food innovation

How food manufacturing businesses can use patents cleverly to protect their new R&D ideas.

Clever Ways to patent¹ your food innovation

In his last article in Food NZ, Peter Brown, registered Patent Attorney, James & Wells Intellectual Property, explored some advantages in seeking patent protection in the food industry. These include leveraging your position with licensing across different industries, using your patents to advertise your company and promote collaborations, and benefiting long term from your food innovation over the 20 year patent term.

Moving on, this article focuses on clever (and quite unexpected) ways we can use patents to protect new ideas which arise from R&D in the New Zealand food industry. As described below with stories to boot, a patent can protect:

• a "sweet spot" identified in your manufacturing process,
• a new commercial use of a known food product or process, or
• a synergistic effect when two or more components in a food/beverage product are combined.

I found a sweet spot!

The process of identifying a key range or condition within a process or product may be patentable, even if the basic elements are already known.

Mock case study:
Chocolate manufacturers, ChocoHeaven, stumbled across a particular temperature range between 65-72°C to be used during a key processing step. This unexpectedly allowed fat to be reduced to less than 1% w/w without adversely affecting colour or taste. Previously, fat was removed at much higher temperatures, leading to poor taste and appearance - meaning consumer satisfaction and sales were low.

ChocoHeaven filed a patent application² focusing on a) the key temperature range used in the method b) the resulting product and c) alternative uses for other similar products. ChocoHeaven used their patent rights to scare off a competing company who secured key knowledge from an ex-employee, thus maintaining a monopoly³ in New Zealand. Passive income has also been secured by ChocoHeaven as they developed licensing deals to non-competing companies in the cheese industry, who could also apply the same key process.

Typical evidence needed:
Showing the boundaries of what does and what doesn't provide the beneficial result(s). This can also help to prompt the inventor⁴ to consider other potentially useful⁵ conditions leading to greater improvements and possibly broadening the patent scope (e.g. cheese vs. chocolate).

New Use of a Known Product - Eureka!
A known product used in a new way can be patentable if the new use is unexpected.

Mock case study:
Feijoa peels are known to have an antimicrobial effect. Chris, who owns a start up chutney company in Hamilton, burnt his throat when prematurely trying his new concoction. When Chris gargled a pulverised blend of feijoa peels (they say necessity is the mother of invention!⁶), his 3rd degree burns all but disappeared.

After confirming the use was new, Chris filed a patent application which focused on the initial concept, also covering a vast array of the potential products and method of treatments. With his patent filing in place, he then felt secure to contract work to a University group to identify what compound in the feijoa skins were providing the therapeutic effect. A further patent was filed to cover the compound's use. A company was then launched which now successfully sells both naturally derived and synthetically developed burn medicaments for internal and external use.

The moral of this story is always keep your eyes and ears open - a new commercial use may be staring right at you!

Typical evidence needed:
Providing arguments why the new use would not be expected, and showing how the original product would not work well for the new use (if adaptations present).

Beautiful Synergy!

A working interrelationship arising from the combination of two or more components that provide a new or unexpected result can be patentable.

Mock Case Study:
Coca Cola originally included a combination of caffeine and cocaine. Some people think the caffeine sensitised the neural pathways in the brain so that the cocaine gave a more significant effect. This provided quite an effective tonic for "nervous businessmen". Theoretically, this synergistic combination could have been patented.

Typical evidence required:
Showing the result of using individual components of the combination in comparison with the result of the synergistic combination itself (it is not necessary to understand the mode of action!).

Summary

Therefore, if your invention gives you a commercial advantage such as those I have outlined above, you should consider patent rights to leverage this advantage. Seeking advice from a patent attorney early in the development process means experiments can be carefully planned to provide both the supportive data needed for any patent application as well as proof of concept to needed to get potential inventors/collaborators on board.

Footnotes

¹A proprietary right in an invention which provides the owner with an exclusive right for up to 20 years to make, sell, use or import the invention. In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge. The patented invention may also be used by the public once the patent lapses.
²In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. The terms "application", "pending" or "patent application" are used to describe the status of the application up to grant.
³A patent grants the patentee a monopoly in the invention that is the subject of the patent. The monopoly extends to the exclusive rights to make, sell, use or import the invention.
⁴The developer of an invention. In the field of intellectual property the word "inventor" is a legal term to describe the person (or group of people) who made the inventive step to arrive at the invention. It is important to understand that this will not necessarily be the person who developed the invention to proof of concept or prototype stage. If the concept itself is inventive then the inventor will be the person who conceived the concept. Ascertaining the correct inventor(s) is important as he or she will need to be named in any patent application and there could be adverse consequences for omitting an inventor or adding someone who is not a true inventor.
⁵The document that accompanies a patent application. It defines the scope of the invention in the claims and provides a detailed description of the nature, use and purpose of the invention. A specification may be provisional or complete and there are different rules applying to each.
⁶The product of the creative process of inventing. In intellectual property law "invention" is a legal term usually describing patentable subject matter. Under current New Zealand legislation that subject matter includes any manner of manufacture which is new and involves an inventive step. However, certain types of invention are excluded from patentability. They include inventions which are contrary to morality (for example weapons of mass destruction) and methods of medical treatment (on public policy grounds that such methods should be available for health practitioners to use to the benefit of all society).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.