Patents And Trade Secrets In The Food Industry
The concept of intellectual property (IP) is based on the rationale of legally protecting products, results and ideas created by human, intellectual and commercial ventures. Having a legal right over any type of IP grants its proprietor the legal right to stop others from using his or her property without permission and gives the owner the right to use that property commercially over a certain period of time.
This article aims to cover one IP right in particular i.e. the law of patents, specifically with regard to its application in the food industry. A patent grants legal protection for an invention in the form of a product or process. The right is recognized and enforceable only after the patent’s registration. In Pakistan, the Intellectual Property Organization of Pakistan (IPO) is the central hub for registering IP rights. More specifically, the concerned department that deals with patents is the organization’s Patent Office.
Theoretically speaking, it is possible for food to be patented in the form of a product or the process involved in its production. However, the requirements for patentability and registration of the patent can be complex. The first thing to bear in mind is that the manufacturing process or product should conform to the requirements of patentability as laid down under Sections 7-10 of the Patents Ordinance 2000.
A food invention will be patentable if it satisfies 3 conditions. According to these conditions, the food invention must be:
- Constitute an inventive step, and
- Be capable of industrial application.
Apart from these 3 positive conditions, there is also a negative condition attached to the criterion of patentability. It includes the food invention not falling within any of the exclusions stated under Section 7(2) and (4) of the Patents Ordinance.
The brief explanations of the requirements of patentability are as follows:
Novelty: The invention shall be considered novel if it does not form part of something state-of-the-art or in its further developing stages. This will be a matter of factual investigation as it will involve gathering information on various sources, such as existing products or processes which are in public knowledge, other granted patents and published applications, etc.
Disclosure is a key factor in maintaining novelty, with the product or process not being disclosed to the public being one of the determining factors. One might believe that if a particular food product is being sold to the public, it has surely lost its novelty as it is being disclosed by being put on the market. On the contrary, it can be argued that novelty is not lost due to such disclosure because the process through which the product is being made is not known or disclosed. Therefore, this will not allow others to reproduce the invention. However, if one can take such a product and decipher as to how it was made, the idea of it being a novelty will be lost.
Inventive Step: Apart from being novel, the food invention also needs to constitute of an inventive step. However, the question is whether the invention would have been obvious to an unimaginative person skilled in the art, prior to the date of application. Simply put, the invention must be new and there must be an inventive step involved in its creation and that inventive step must not be obvious to the person skilled in the art. This is where patenting food gets tricky as the concept of making food by mixing ingredients to produce different food products has existed since the dawn of mankind. New recipes are merely combinations of known ingredients mixed in varying amounts,or are variations of known recipes. Even if a food invention is termed as “new”, it can still be considered obvious and not have an inventive step.
Typically, a final food product is nothing more than the expected sum of individual components; if it will produce a result that can be considered obvious to a person having skill in culinary arts, it will fail on the grounds of obviousness. To be truly patentable, the food invention in question will have to be novel and the process involved in making it must be so unique that the result should not be considered obvious to a person skilled in the art at the time of the application.
The state of culinary arts has greatly developed, so much so that ingredients used or the way in which they are processed generally produce obvious results to a person skilled in the art. This is the biggest hurdle one must pass in order to patent a food invention. However, if such a combination of the ingredients used or the way in which they are processed produces a resulting food product which is unexpected to a person skilled in the arts, such food invention may be patented.
Industrial Application: Finally, it must be possible to make the food product or carry out the process. The food invention must be able to be put in practice and should not simply be an idea.
As mentioned before, food inventions can, in theory, be patented, but for lawyers and businesses, the practical implications are far more important than theoretical implications. Therefore, this may lead us to ask the question, “Have there been patents granted for food?” For those who might not already know, the answer is in the affirmative.
On 21st December 1999, Len Kretchman and David Geske were granted a food patent in the United States of America by US Patent 6004596, named “Sealed Crustless Sandwich”. The abstract of the patent document states:
“A sealed crustless sandwich for providing a convenient sandwich without an outer crust which can be stored for long periods of time without a central filling from leaking outwardly . . . 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 into and through the bread portions from the surrounding peanut butter.”
There are 10 claims and 4 drawing sheets in the patent document. One important fact to be mentioned is that the US Patent office issued a re-examination certificate of the patent on 25th September 2007. As a result, all the claims of the inventor were struck off. The patent office invalidated the patent, presumably due to someone contesting its validity. However, what is important is that it was approved as a patent, meaning that the theory that food inventions can be patented has merit.
Another example of a food patent is US Patent 4,399,156 granted for a food invention known as a “Fried Burrito on a Stick”. The patent document had 15 claims and 9 drawing figures to explain the food item.
Despite protection being extremely rare and difficult to establish for food inventions in the law of patents, there are other areas in which food products and their processes can be protected. Even if the item in question or the process can be patented, deliberation should be given to the fact that a patented invention will only offer protection for up to 20 years from the date of filing (Section 31 Patents Ordinance 2000). This basically means that the person who has been granted the patent can seek to gain benefit from it for a period of 20 years. After this period, it will form part of the state-of-the-art and will be open for the public to adopt.
Many big food corporations/companies do not seek to patent their food products because they want a longer lasting protection as compared to what is afforded by being granted a patent. Whether these food products or processes are patentable is another question, but even if they are, some will not seek to patent them anyway. The reason for this is that firstly, the patent offers limited time protection, and secondly, the patent document is a public document and it will be open to anyone to see how the food invention was made, as well as the process involved in its creation. Moreover, after the 20-year time period, anyone can use that document to make such a product. Therefore, entities like Coca-Cola have chosen not to patent their flagship products and instead, have kept it as confidential information, or a ‘trade secret’ as it is more commonly known in the US.
The Coca-Cola Company has kept its secret formula as a trade secret for a long time. Had the inventor of Cola-Cola patented the product or the process (assuming it satisfied the test for patentability), the secret formula would be known to the public and the period of protection granted to the product would have only lasted 20 years. Thus, the option which Cola-Cola did take was to protect its formula as a trade secret, something which even as of today is unknown and protected by the Cola-Cola Company.
In Pakistan, there is no legislation that protects trade secrets. On the other hand, in the USA, each state has its own version of the Uniform Trade Secrets Act. The Act seeks to protect confidential information which has commercial value and is to be protected against unauthorized disclosure and use.
In the UK, case-law governs the law of confidence and the court uses its equitable jurisdiction to restrain unconscionable behavior (i.e. the behavior which could also lead to damage). The key case that lays down the elements of confidentiality is Coco v AN Clark (Engineers) Ltd  RPC 41. The test is:
- Did the information have the necessary quality of confidence about it?
- Was the information imparted in circumstances importing an obligation of confidence?
- Was there any unauthorized use of the information?
In the absence of express legislation, whether such principle could be incorporated into Pakistani law or not is questionable. However, there can be express confidentiality agreements that can bind employees and former employees for the purpose of non-disclosure of such information as that would be governed by contract law.
Even trade secrets cannot afford complete protection to a food invention. This is because competitors can reverse-engineer a food product which is a trade secret and come up with a similar food product, one which is not exactly the same but does share similarities and would not be in breach of any law. Regardless of whether protection is claimed under the more unlikely patent grant or as a trade secret, one thing is certain; businesses involved in the food industry will want to gain an advantage through their innovative food products and processes as that advantage would be responsible for generating goodwill for the business. Therefore, they will want it to be protected either as a trade secret or under a patent.
“Commercial and Intellectual Property Law and Practice 2016” by Judith Embley, Keir Bamford and Nick Hancock.
“Food Patents” by Joseph Page
“Can Recipes Be Patented?” by Larry Tarazano
The views expressed in this article are those of the author and do not necessarily represent the views of CourtingTheLaw.com or any organization with which he might be associated.