G4/19 Decision: Double patenting is a ground for refusal before the EPO
The Enlarged Board of Appeal of the European Patent Office has made a decision on the G4/19 referral.
Earlier this month our Senior Associate, Chris McDonald, presented at the ‘Food & Beverage, Law & IP Summit’ on patent protection for recipes and product formats. This article is a brief overview of his presentation.
There is some doubt within industry regarding patenting of recipes or product formats; whether it’s possible or viable. Arguments against filing patent applications for recipes say it’s too difficult, and that new recipes are generally mere combinations of known ingredients in varying amounts, or variations on known recipes.
So, are recipes or product formats patentable in practice? In principle – yes. A recipe or product format, like any invention, can be protected with a patent provided it is useful, novel and contains an inventive step.
Inventive step is the most critical, and often the hardest, part to prove. Even if a previous version of recipe can’t be found, a new recipe could still be held to be an obvious modification of what’s gone before. For example, adding sugar to make something sweeter or offset sourness, or adding fat or moisture to make bakery products softer, results in exactly the product you would expect when you modify the original version like this.
On other hand, an inventive step can be shown for a new recipe if there is one of a number of unexpected or improved outcomes as a result of the combination of ingredients, such as:
For a product format, examples of improved outcomes could be:
Companies should therefore bear in mind that recipes and product formats are potentially patentable. Product format patents, in particular, are potentially very strong and easily policed as it is easy to tell if a competitor product has the same format as the patent. On the other hand, many recipes won’t be able to benefit from patent protection. So, if this isn’t the answer, what options are available to you?
Trade secret or confidential technical information can be used for recipes which can’t be usefully patented. Trade secrets can be useful for mixtures of ingredients which are quite complex, such as a mixture of several different spices. However, product formats can’t normally be kept as trade secrets as they are too easily deduced from a visual analysis of the product.
There are no registration processes or costs involved in keeping a trade secret, and ‘protection’ is effective immediately and indefinitely. However, trade secrets cannot prevent competitors from independently reverse engineering a formulation.
Another potential option for a composition which is unlikely to be the subject of a granted patent is the tactical patent application. A company can still file a patent application to the composition, which enables the marketed product to be labelled as ‘patent pending’, even in the knowledge that a successful outcome may not be likely. This in itself can be a useful marketing tool.
Patent applications can remain pending for several years. This can act as deterrent or commercial nuisance for a competitor who may think twice about entering the market for a product covered within the application, just in case a patent is ultimately granted. By the time an application is eventually refused, allowing others to copy the product without risk of infringing, a company can have developed a head start in becoming the market leader for that product, with some brand recognition. Also, once a patent application is published, it ensures that no-one else can patent that same product.
Another incentive to try and patent an invention is provided by the Patent Box scheme. This allows UK companies to pay a reduced rate of UK corporation tax on worldwide profits earned on patented products. A single UK (or other EP) patent is all that is required to obtain tax relief on worldwide profits and for a successful product, and this can add up to significant amount. However, your patent must be successfully granted in order to obtain this relief. For further information on the Patent Box scheme, please get in touch.
Ultimately, the decision on how to protect a recipe or product formulation depends on business considerations and weighing up the relative benefits of each type of IP. Whether or not to patent should be carefully considered, but not dismissed easily.
Talking to a patent attorney will give greater degree of understanding of the chances of obtaining patent protection. Get in touch with us today for a no-obligation discussion.