Strategic Use of IP in the Food Industry. For audio portion, please dial: Passcode Thursday, June 5, :00 p.m.

Transcription

1 1 Strategic Use of IP in the Food Industry For audio portion, please dial: Passcode Thursday, June 5, :00 p.m. Eastern Speakers 2 Michael D. Flanagan Foley & Lardner LLP Partner Food & Beverage Industry Team Co-Chair mflanagan@foley.com Charles G. Carter Foley & Lardner LLP Partner ccarter@foley.com Richard J. McKenna Foley & Lardner LLP Partner rmckenna@foley.com 1

2 Overlapping Design Patent and TM Protection Strategies for Food Products Presented by Richard J. McKenna Food Protection Strategies Innovations can be used to Distinguish Products from Competitors IP Protections for Innovations create effective barriers to competition Functional Innovations protected via Utility Patents and Trade Secrets Ornamental, Non-Functional Innovations protected via Design Patents and Trademarks 2

3 Food Protection Strategies Overlap of Design Patent and Trademark Protection. Protection Begins Term of Protection DESIGN PAT Upon issuance of Patent 14 Years from Issuance (soon to be 15 Years) TRADEMARK Only after years (typically 5 years) of continuous and exclusive use Unlimited so long as promotion and use of mark continues Scope of Protection Nonfunctional, ornamental features embodied in product itself, or packaging for the product Food Protection Strategies Step 1: Secure Design Patent Protection. Protects new, ornamental design Patent typically issues months from filing date Contents of application remain secret until design patent issues Cost Estimate typically under $3,000 3

4 Food Protection Strategies Step 2: Use Design Patent to Exclude Competitors. Patent gives owner the right to exclude others from making, using, selling or offering to sell product in US market for 14 years from issuance (soon to be 15 years from issuance). No need to prove consumer confusion, only similarity of infringing product to patented design. Food Protection Strategies Step 3: Proactively Build TM Rights - Promote the Design to Consumers. During the 14 years of exclusivity, use this opportunity to build consumer recognition and goodwill in the product design. Draw consumers attention to the unique ornamental features. 4

5 Food Protection Strategies Step 4: File for Registration of Trademark After years of active promotion and sale (typically 5), file for registration of non-functional design as a trademark. Assuming suitable evidence can be presented, registration will be granted approximately 12 to 18 months after filing. Registration will last for as long as the design is sold and promoted in marketplace, potentially well after expiration of Design Patent. Food Protection Strategies Step 5: Use Trademark Registration or Design Patent to Exclude Competitors. Design Patent term currently lasts 14 years from grant of patent Trademark Registration gives owner unlimited term to prevent others from promoting and selling products in the US in which there is the potential for consumer confusion as to the source of the goods. 5

6 Examples Design Patents Examples Design Patents 6

7 Examples Design Patents Examples Design Patents 7

8 Examples Design Patents Examples Design Patents 8

9 Examples Trademarks Examples Trademarks 9

10 Examples Trademarks Examples Trademarks 10

11 Examples Trademarks Pretzel Crisps - Case Study 11

12 Pretzel Crisps - Case Study Commercial Product Defensive Patent Filings Pretzel Crisps - Case Study 12

13 Pretzel Crisps - Case Study Pretzel Crisps - Case Study 13

14 Is Food Patentable? 27 New Food Products?New Ingredients? New Processing Method? Functional Shape / Configuration of Food? Packaging / Delivery Method? Examples of Successful Infringement Litigation with Food Products/Processes Mars v. Del Monte (Heinz) 2001 Mars awarded $3.6 million damages U.S. Patents 6,312,746 and 6,254,910 Dual texture pet or animal food product formed by co-extrusion process Example of both Food Product and Process claims 28 14

15 Food - Successful Infringement Litigation 29 Nat l Pasteurized Eggs v. Michael Foods 2012 NPE awarded $6 million damages U.S. Patent 6,165,538 In-shell Pasteurized Eggs Example of both Food Product and Process claims V. MANE Fils v. Int l Flavors & Fragrances 2010 V. MANE awarded $40 million damages U.S. Patent 5,725,865 Ingestible product with coolant additive Example of claims based on New Ingredient Food Infringement Litigation Settled Cases 30 Ocean Spray (2008) Craisin Patent U.S. Patent 5,320,861 Example of both Food Product and Process claims Mars (2010) Pharmaceutical product with cocoa bean extract U.S. Patent 6,479,539 Example of Product claims Process not unique Lycored Corp (2012) - Dried tomato pulp/tomato serum product U.S. Patent 5,837,311 Example of both Food Product and Process claims 15

16 2013 Supreme Court Myriad Decision Upends the Status Quo 31 Isolated genes or gene fragments But cdna Non-naturally Occurring DNA Sequences Not Patent Eligible Patent Eligible Court noted not ruling on method claims Expressly indicated new uses of existing product potentially patentable Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 US (2013) 2013/14 US PTO Guidelines Natural Product Claims 32 Natural Products include but not limited to Chemicals derived from natural sources (e.g., antibiotics, fats, oils, petroleum derivatives, resins, toxins, etc.); Foods (e.g., fruits, grains, meats and vegetables); Metals and metallic compounds that exist in nature; minerals; Natural materials (e.g., rocks, sands, soils); Nucleic acids; Organisms (e.g., bacteria, plants and multicellular animals); Proteins and peptides; and Other substances found in or derived from nature. 16

17 2013/14 US PTO Guidelines Natural Product Claims (cont.) 33 a) Claim is a product claim reciting something that initially appears to be a natural product, but after analysis is determined to be non-naturally occurring AND markedly different in structure from naturally occurring products b) Claim is a product claim reciting something that appears to be a natural product that is not markedly different in structure from naturally occurring products 2013/14 US PTO Guidelines Examples 34 Fresh Strawberry Flavor 2-Methyl-2-pentenoic Acid If acid merely extracted from strawberries => Not Patent Eligible Cooked Strawberry Flavor 2-Methyl-4-pentenoic Acid Markedly different structure Created by human manipulation ( Hand of Man ) => Patent Eligible 17

18 2013/14 US PTO Guidelines Examples (cont.) 35 Purified/Isolated Naturally Occurring Amazonic Acid => Not Patent Eligible Purified 5-Methyl-Amazonic Acid => Patent Eligible Mixture of Copper and Tin Metals => Not Patent Eligible Copper / Tin Alloys => Patent Eligible 2013/14 US PTO Guidelines Examples (cont.) 36 Pomelo Juice Example 1. A beverage composition comprising: a) pomelo juice; and b) a preservative ineligible, (a) and (b) could be natural products 2. A beverage composition comprising: a) pomelo juice; and b) Preservative X eligible, (b) is not a natural product 18

19 Revisiting Past Infringement Litigation with Food Products / Processes 37 Lycored Corp (2012) - U.S. Patent 5,837, A tomato food product, consisting of a mixture of extracted and dried tomato pulp and concentrated tomato serum 18. Process for producing a tomato food product a) pretreating the tomatoes by conventional operations, including crushing; b) subjecting them to a heat treatment; c) separating the crushed tomatoes into a pulp and a serum; d) extracting, drying and grinding the pulp to an average particle size of microns; e) concentrating the serum; f) mixing the dried ground pulp with the concentrated serum; and g) re-drying the mixture. Revisiting Past Infringement Litigation with Food Products / Processes (cont.) 38 Mars (2010) - U.S. Patent 6,479, A pharmaceutical composition comprising procyanidin oligomers. prepared by a process comprising the step of: i. reducing cocoa beans to a powder, ii. defatting the powder, and iii. extracting and purifying the procyanidin oligomers from the powder. 19

20 Revisiting Past Infringement Litigation with Food Products / Processes (cont.) 39 Mars (2010) - U.S. Patents 6,312,746 & 6,254, A dual texture pet or animal food product comprising: a first component a second component wherein the second component completely surrounds the cream-textured matrix of the first component and is formed by the co-extrusion A method of making a delivery system for process unstable or sensitive ingredients co-extruding the first component within the second component to form one dual component extrudate Revisiting Past Infringement Litigation with Food Products / Processes (cont.) 40 Nat l Pasteurized Eggs (2012) - U.S. Patent 6,165, A pasteurized in-shell chicken egg, comprising a pasteurized central portion of a yolk of the egg having at least a 5 log reduction in a Salmonella species present said egg having an albumen functionality measured in Haugh units not substantially less than the albumen functionality of a corresponding unpasteurized in-shell egg and a yolk index and yolk strength substantially the same as a corresponding unpasteurized egg. 20

21 Revisiting Past Infringement Litigation with Food Products / Processes (cont.) 41 Ocean Spray (2008) - U.S. Patent 5,320, A method for processing fruit, comprising. penetrating raw fruit to expose the inside of said fruit, unprotected by the skin, countercurrently extracting said fruit with an extraction liquid collecting the extract from said fruit, collecting the extracted fruit, and countercurrently infusing said extracted fruit with an infusion liquid Is Food Patentable? Final Thoughts US PTO Guidelines may be significantly altered by future court decisions US PTO Examiners will reject claims in current applications based on Guidelines Be patient and prepared to battle, while positioning patents for potential future shift in US PTO position 21

22 43 Questions? Please type them in the Q&A box on your screen. 22