IP Ingredients, Part 9: Protecting a food or drink manufacturing process

While patents are most often associated with new products like food compositions or food preparation equipment, they can also be obtained for new processes.

Process patents are sometimes considered to be less valuable than patents which protect products. This is because it can be more difficult to enforce a process patent as you may not be able to determine (e.g. from analysing the resulting product on the market) whether your competitors are using your patented process behind closed doors.  However, process patents can still provide commercial value by acting as a deterrent to would-be infringers, extending protection to a different aspect of your technology and adding value to your IP portfolio.

When is a process patentable?

A process need not be for manufacturing a completely new product in order to be patentable, although it can be.  A modified process for the production of an existing product may also be patented, provided that the process itself is novel (i.e. not previously disclosed anywhere, by any means) and inventive (i.e. not an obvious modification of a known process).  Patent protection is also not limited to the production of specific food or drink products, and is therefore relevant to any new process in the food and drink space, from methods for preserving fruits (e.g. EP4152937B1) to methods for 3D printing food products (e.g. EP3967158B1) to methods of extracting useful oils from food waste (e.g. GB2611578B).

To patent or not to patent?

How do you decide whether it is worth filing a patent application for your process?  The first consideration is whether the process provides commercial value to your business.  Does it provide an advantage over your competitors, e.g. by improving yields? Maybe it enables you to generate value from by-products that other companies treat as waste.  Or perhaps there are other reasons for boosting your patent portfolio, such as ahead of a funding round.

The second consideration is whether you want to disclose your process, which is a requirement of applying for a patent, or whether you would prefer to retain it as a trade secret.   Patent protection lasts for a maximum of 20 years from the date of filing, whereas trade secret protection is potentially indefinite.  Deciding which route to go down therefore requires weighing up a number of factors, including whether you believe the process can be kept a secret, whether the innovative features of the process can be reverse engineered by analysis of the final product and the duration of protection required.

A further consideration is whether it is necessary to disclose the whole of your process in a patent application.  It may be possible to patent just a part of the process, while retaining the other steps of the process as a trade secret.  In some cases, this strategy can be used to obtain the best of both worlds.

What to include in your application

As in all patent applications, a detailed description of the process should be included in order to meet the legal requirements of sufficiency, which means that the invention must be disclosed in enough detail for someone skilled in the field to put it into effect.  For a process, this means describing any equipment, process steps and parameters that are used.  Some of these features may be described more generally.  For example, if it is not important how exactly a mixing step is carried out, it may be sufficient to just state that the ingredients are mixed.  However, any features which are essential for the invention to work, or which are important for achieving a particular technical benefit, will need to be described in more detail.

Ideally, the application will include at least one example detailing how the process was carried out in practise.   As discussed in Part 8 of this series (“Data in food and beverage patent applications – Why, What & How much?”), data demonstrating the advantages conferred by the invention can be particularly useful in persuading the patent office that it is non-obvious.  This also applies to process claims.

In decision T1037/22, the EPO’s Board of Appeal considered the patentability of a process for preparing an infant formula.  The process of the invention differed from a known process only in that it used a low-shear static mixer which, according to the patentee (N.V. Nutricia), resulted in a more narrow lipid droplet size distribution.  However, in the absence of any supporting evidence that the static mixer did indeed give rise to a narrower lipid droplet size distribution, the Board found that the use of a static mixer would have been obvious alternative to a skilled person.  In contrast, in T0102/22, relating to an oil-in-water emulsion, the use of sodium ascorbate as a water-soluble antioxidant was found to be non-obvious even in the absence of comparative data.  Thus, while data is not always essential, in many cases it can mean the difference between a valid patent and no patent.

It is also important to ensure that any parameters referred to in the claims are well defined so that third parties can determine whether they are working inside or outside the claim scope, and thus whether they infringe.  A failure to properly define parameters and, where necessary, provide methods for their measurement can lead to clarity objections.  In the worst cases these objections cannot be overcome, leading to refusal of an application or revocation of a granted patent.   This can be a particular issue in proceedings before the European Patent Office, which is known to pay particularly close attention to the use of parameters.

For example, in decision T1497/08, the EPO’s Board of Appeal considered the allowability of a claim directed to a process for producing a fried flour-based product. The claimed process included a step of preparing a dough using flour, water and a lipolytic enzyme having a specified phospholipase activity.  However, the claim itself did not define how to measure the phospholipase activity.  The opponents challenging the patent successfully argued that a skilled person would not know which method to employ and, since different known measurement methods would give different results, the claim was unclear.  The patent proprietor (Novozymes A/S) was unable to overcome this flaw and ultimately the patent was revoked.

Some key takeaways to keep in mind when developing a new process or modifying an existing process:

1) Consider whether your process provides a commercial advantage, such as greater efficiency or turning waste into a useful product.

2) If it does, discuss with your patent attorney whether the process (or parts of it) could be patentable, or whether there are greater benefits in retaining the IP as a trade secret.

3) If you decide to proceed with a patent application, ensure that all process features are described in sufficient detail, particularly the features which confer benefits over known processes.  Include comparative data if possible, and ensure that process parameters are adequately defined.

For more advice on patenting processes in the food and drink space, please contact the author, Jennifer Bailey at [email protected].

This article was prepared by Partner and Patent Attorney Jennifer Bailey