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PROTECTING A SENSORY ATTRIBUTE OF FOOD BY PATENT
by Robert J. Lewis, 2006
Thousands of patents have been issued protecting various aspects of food products and their methods of manufacture, except one. Can a food product be patented that is differentiated from other food products by a sensory attribute such as its taste? The simple answer is yes, but it may not be easy.
The grant of patents is controlled by Federal statutes and rules. The two basic types of patents of concern for food products are utility patents, and design patents. Utility patents are used to protect food products, e.g., formula and functional aspects and methods of making or using food products. Design patents can protect the appearance of food products.
Several requirements must be met before a patent will be granted. The invention must be within permitted subject matter, useful, new (not anticipated) and non-obvious. The law also requires a written description of the invention and of how to make and use the invention. Food products are clearly proper subject matter and are useful. We assume for this article that the invention is new. That leaves two statutory hurdles, non-obviousness and description of the invention.
Many attributes of food have been patented, for example: microwave browning; preventing warmed over flavor; a frozen toaster pastry which might be characterized loosely (but wrongly) as a jelly donut for toaster reheating; fried pizza crust; starch with reduced digestibility; pie crust; pasta; food containers; microwavable foods; and, how to achieve mouthfeel in a chip. It is clear that how to achieve a sensory attribute is patentable, but a patent for a food product as characterized by a sensory attribute itself, like a taste profile, has not been found.
Early on, food patents did not fare well with the Courts which Courts point us to two potential problems, ingredient co-action and a lack of invention mentality. One point made in two Court decisions that held food patents invalid, is that there was no co-action between the various ingredients of the food product. The Courts appeared to concern themselves with patents precluding cooks from doing their work (cook’s work) and also perhaps lack of merit or lack of invention. Those Courts should visit a food developer’s "kitchen" today and reassess these early views.
When the Patent Act was revised in 1952, Congress added a provision to respond to anti-patent decisions from the Supreme Court. Congress provided that "Patentability shall not be negated by the manner in which the invention was made". In a non-food related decision after the revision to the Patent Act in 1952, the Supreme Court explained some of the earlier patent cases and stated that what is included in patentable subject matter is, simply put, "everything under the sun". The broad holding of this decision appears to support sensory based patent claims so long as the other statutory requirements can be met. Additionally, since the early anti-food patent cases, the problem of "cook’s work" has in large part been circumvented usually by identifying a problem with a type of food and then providing the technical solution to that problem. Growth in the science of foods and food processing has also enabled better scientific description of a food invention. Science has also helped overcome the perception expressed in some early cases that food development is cook’s work and unworthy of patent protection.
Many food products are characterized principally by a sensory property like taste profile. Such food products include dressings (e.g., ranch dressing), sauces and drinks. It takes as much engineering and scientific effort and talent to obtain an appropriate sensory attribute as it does any other attribute, including those that are the subject matter of patents. In fact, developing a sensory attribute may often take more effort, science and engineering. But, can a food product as characterized by a sensory attribute be patented, particularly given some of the early Court decisions?
The first issue will be obviousness of the invention over the prior art. Careful drafting of the patent application and good technical explanation of the invention will help overcome this inevitable rejection by the Patent Office. The second issue is, can a food product’s sensory attribute be adequately described to comply with the statutory requirements for a written description and claiming? If the food product’s taste profile and how to obtain and test for the taste profile can be adequately described and reliably tested, the statutory requirements for description of the invention can be met. Drafting such a patent application will require care and skill as will the technical characterization of the sensory attribute and the breadth of the sensory attribute. Analytical techniques have improved dramatically in the last 30 years. Many food attributes were known but were not quantifiable or at least not accurately and/or repeatably quantifiable. In order to obtain a patent on a sensory attribute like taste, one needs to be able to reliably measure the taste profile, teach how to achieve that taste profile, teach how to make the food product and reliably test for the claimed taste profile. If these can be done, there appears to be no legal reason why a food product could not be patented with the food being characterized by a sensory attribute as opposed to the classical attributes e.g., shelf life, freeze/thaw stability, digestibility or lack of digestibility. In theory and practice, there is no difference.
A taste profile can be developed either by adding one or more taste inducing ingredients, for example, an herb or a spice. A taste profile can also be developed in situ, e.g., roasting and blending coffees. However, to obtain a patent one will need to disclose what has classically been treated as a trade secret, i.e., how a particular taste profile has been achieved and the ingredients or process needed to achieve that taste profile like that of the Coca-Cola® formula or ranch dressing or other sensory attribute, like that of a pizza crust with a crisp exterior and bready interior. This is the trade off, a complete enabling disclosure teaching one skilled in the art how to produce the food product and how to reliably measure its taste profile and perhaps even how to adjust formulas or processes to achieve the unique taste profile or other sensory attribute. Trade secret protection though is only as good as analytical skills are bad.
Can we reliably measure a taste profile? There are people, both in-house and at consulting companies, capable of testing for and identifying flavor profiles. A taste profile may be characterized by standards for each important taste component and a panel trained to quantify intensity of each taste component. For the patent, the taste profile components may be prioritized in level of importance to legally define the invention and its scope.
A taste profile can be characterized on what is referred to as a spider diagram that can have multiple axes, one axis for each taste component. Taste profiling of drinks is commonly done for quality control and product development. For example, coffee is evaluated on several taste attributes, each measured against a defining standard. Some tastes could include bitter, musty, etc.
Significant efforts are being devoted to improving sensory testing. ASTM has a subcommittee, E18.03, working on a Standard Practice/Guide for Measuring and Tracking Sensory Descriptive Panel and Panelist Performance, WK8435.
Many food products are principally characterized by a sensory attribute such as a taste profile. Perhaps it is time to consider protecting the efforts of one’s development dollars in a new manner.
© 2006 Robert J. Lewis. Reproduced with permission of the author.
Mr. Lewis joined McHale| | Slavin, of counsel, in 2009.
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