Month: February 2014

The top dog of FAQs: “Can I patent my recipe?"

By Stephen B. Schott
My mom challenged me to eat a hot dog with peanut butter on my 8th birthday and I did. It’s delicious and we call it a “nutty dog.”  She found the recipe in a cookbook, so it is not a new idea. But the thinking that lead to this Frankenstein’s monster food is the kind of crazy genius that leads people to ask the question that follows me everywhere: “Can I patent a recipe?”
The answer is a definitive “Yes.” But, and there’s a but, if you have a recipe that you believe should be patentable, you will face all of the same legal hurdles that any patent application faces. All inventions must be:

  1. patentable subject matter,
  2. useful,
  3. novel, and
  4. non-obvious.

These legal requirements can be hard to understand but both the USPTO and Gene Quinn at IPWatchdog have written great articles explaining how the law applies to food recipes. If you want a review of the legal issues, I encourage you to read those articles. Both articles reach the same conclusion: A recipe’s biggest hurdle is not 1-3 on the list, but 4: Is the recipe non-obvious?
To answer the non-obviousness question, let’s use a hypothetical, which is easier than plunging into the legal analysis out of context. In our hypothetical, you have created a new cookie. It’s delicious. Everyone who samples it loves it. But is it patentable, and in particular, non-obvious? A few things to consider are indicators of non-obviousness like:

  1. The invention's commercial success,
  2. Long felt but unresolved needs,
  3. The failure of others,
  4. Skepticism by experts,
  5. Praise by others,
  6. Teaching away by others,
  7. Recognition of a problem, and
  8. Copying of the invention by competitors.

Keeping those in mind and assuming that your invention is different than earlier recipes, let’s turn to some examples.
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Recipe variation 1: Your cookie recipe is the same as a standard cookbook recipe, except that you adjusted the flour and sugar in a way that makes it sweeter. The sweet cookie is delicious—anyone who tastes it agrees that it’s incredible. Sadly, though, this cookie recipe is probably not patentable because it is obvious.
The USPTO even has a specific comment on the patentability of something like this. "A final food product typically is nothing more than the expected sum total of individual components. For example, the more sugar one adds to a cake batter, the sweeter the finished cake is expected to be.”
Conclusion: The patent dough does not rise. Non-patentable.
Recipe variation 2: You add hops to the cookie batter and the result is a bitter hoppy-tasting cookie that no one has ever tasted before. This too, according to the USPTO may hit a stumbling block. "Similarly, adding tarragon to a dish that doesn’t usually include tarragon may result in an unexpected taste for that particular dish, but not an unexpected result.”
Conclusion. The patent dough does not rise. The delicious beer cookie is non-patentable.
Recipe variation 3: You add a new ingredient that improves the cookie shelf life and the market loves it. Looking at the indicators of non-obviousness above, your new ingredient fills a long-felt need (improved shelf life), has commercial success, and solves a problem where others failed. These would weigh in favor non-obviousness.
Conclusion. The USPTO issued a patent for an improved shelf-life cookie in 1982.
Recipe variation 4: Everyone loves warm cookies, so you develop a mix of known ingredients that can cook the perfect—and warm—cookie in a toaster. There has been a resurgence in the pop(!)ularity of Pop Tarts and there’s been a demand for cookies that can cook in toasters. Existing toaster cookies tend to burn and cook irregularly. Even though you used common ingredients, the invention's commercial success and the failure of others weigh in favor of patentability.
Conclusion. The USPTO granted a patent for a toaster cookie in 2000.
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Recipe variation 5: The baking industry’s solution to helping cookies keep their shape was to add more flour to cookie dough but this was largely a failure.  You add an ingredient to the cookies that allows them to hold their shape better while maintaining the flour ratio. This overcomes the problem of cookies tending to spread when cooked and also recognizes that other solutions to the problem of spreading cookies only considered using more flour to solve the problem—something that did not work well—which is failure by others.
Conclusion. The USPTO granted a patent for a cookie that held its shape better in 1994.
The USPTO regularly grants food recipe patents, but they must clear the same hurdles as all inventions. Some are for things like synthetic fruit spreads and others are for lower calorie alternatives to natural foods. If you have a recipe and want to discuss its potential for patentability, please contact me.
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Using “Configured to” in Patent Claims

By Stephen B. Schott
Claim drafting language choice is critical in a patent application. One of the terms that claim drafters sometimes use is “configured to.” Although there have been some warnings about the risks in using this term, Chief Judge Rader’s recent non-precedential concurring opinion in Superior Industries, Inc. vs. Masaba is the clearest indicator yet that “configured to” is a phrase that patent claim drafters may want to avoid until its scope is clear.
Superior Industries involved several patents including US Patent 7,424,943 that included a claim element for a support frame [32] that is "configured to support an end of an earthen ramp [150].” A figure from the patent helps show the claimed device.

Although Judge Rader did not specifically call out the “configured to” language, he offered advice to the District Court on remand:

I agree with, and join in, the majority opinion. However, in reviewing the claim constructions articulated by the district court, I observe that it read a great deal into the claims in the process of construing them. Thus, I write separately to articulate a couple claim construction principles that may assist the district court on remand when it revisits its constructions. First, in claim construction, one must not import limitations from the specification that are not part of the claim. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed.Cir.2012). Indeed, claims generally are not limited to any particular embodiment disclosed in the specification, even where only a single embodiment is disclosed. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir.2004). Second, and relevant to this case, a system claim generally covers what the system is, not what the system does. Hewlett–Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function.Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed .Cir.2009).

Most commentators, including Dennis Crouch at Patently-O, interpret Judge Rader’s concurring opinion as directed at the “configured to” claim language. This is a safe assumption and may be an indicator that the Federal Circuit will take up a “configured to” case in the near future.
To date, the Federal Circuit has skirted around claims that use “configured to” and Judge Rader’s quote cites some relevant cases. The Manual of Patent Examiniton Procedures (MPEP) section 2114 advises examiners that  “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function…Apparatus claims cover what a device is, not what it does.” The MPEP cites In re Schreiber, 126 F.3d 1473 (Fed. Circ. 1997) andHewlett Packard Co. v. Bausch and Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Despite the MPEP’s confident assertion, these cases do not stand for the premise it cites, and thus it remains unclear what the scope of a functional limitation is.
When drafting a claim with functional language, a claim drafter should consider the following.

  • Add depending claims with varying levels of structural detail to provide a patentability and validity position if the functional language is found to be indefinite.
  • Claim structural elements in combination with functional language.
  • When adding structural elements to functional language, be careful not to create a claim that is both a method and apparatus, which is prohibited. IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377 (Fed. Cir. 2005)
  • Be careful to avoid creating a means plus function claim that would be interpreted under 35 USC 112(f).

If you have questions, please contact me.
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Why You Should File a Provisional Patent Application, Especially if You’re a Start-up.

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
Yesterday I heard this conversation between a venture capitalist and a start-up company with an excellent idea.
VC: “It’s a crowded market with lots of competition. Do you have patent protection?”
Start-up: “No, not yet.”
VC: “But you have some pending patent applications?”
Start-up: “No, we wanted to get our product to market first then go back and maybe get a patent.”
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The venture capitalist politely exited the conversation. Why? Did you ever see Ghostbusters? If you did, there’s a moment in it where Winston advises Ray that “When someone asks if you're a god, you say YES!” I would advise innovative start-ups similarly. “When someone asks if you are seeking patent protection, you say YES!”
The VC manager bailed out of the conversation not because the start-up might fail, but because the the start-up didn’t have the foresight to start protecting its idea and creating the most valuable of assets: the patent. Why should a small company, start-up, or new business consider filing a at the very least a provisional patent application? Here are a few reasons.
(Before discussing the reasons why you should at least file a provisional application, take a gander over here if you want to know what a provisional patent application is.)
6 Reasons to File a Provisional Patent Application
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(1) A patent application shows you’re innovative. Filing a patent application lets people know that you think your idea is so good that you want a patent on it. If you’re willing to bet on your innovation, someone else might be willing to do the same.
(2) A patent application creates an asset. The monopolistic rights that go along with a patent don’t exist until the patent grants but the application starts the process of getting a patent. The patent is a more valuable asset but the application is also an asset that will impress an investor or business partner.
(3) You can use PATENT PENDING. PATENT PENDING is a label that informs the world (clients, competitors, investors) that you appllied for patent protection. When someone sees this on your products, packaging, advertising, and marketing, it puts them on notice that you are pursuing a patent and if they are thinking of copying your idea, they must tread lightly.
(4) Your partners and investors will take comfort from seeing you invest in your own ideas. Filing an application shows that you raised or spent money and invested it in your invention. This inspires confidence in others.
(5) Filing an application is important because of the “first inventor to file” rule. The United States recently followed many other countries and became a “first to file” country, meaning that if two people invent something independently, the first of them to file their application at the patent office will receive the patent for it, regardless of who invented it first. Thus, filing your patent application is critical to insure someone else does not file for patent protection on your invention.
(6) A provisional application is an inexpensive way to buy yourself a year to vet your idea. If you decide to file a provisional patent application instead of a non-provisional patent application, you will make less of an investment to secure a patent application filing date for a year while you test your market. This savings can be spent on marketing, tooling, and other start-up expenses. At the end of the year, you can decide whether you should then file your nonprovisional application.
If you have questions, please contact me.
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Patent Law Basics: What is a Provisional Patent Application?

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
Provisional patent applications are confusing. They don’t mature into patents. But they kind of do. The US Patent and Trademark Office doesn’t review them like they do a nonprovisional patent application. But they still must meet strict legal requirements or they are useless. And the name itself is confusing because the “real” patent application that matures into a patent—the nonprovisional application—is named with a negative prefix of the provisional.
While I can’t defend the poor naming of the nonprovisional, I can take a shot at explaining what a provisional patent application is.
What is a provisional patent application? A provisional patent application is a placeholder application. It establishes a filing date for your patent application and if you file a nonprovisional patent application within one year of filing the provisional, it secures a filing date for your invention.
Provisional patent applications DO:

  • Give you the right to use the term PATENT PENDING. This has marketing advantages and puts competitors—large or small—on notice that you are seeking protection for your invention.
  • Secure your application’s filing date for purposes of the first inventor to file rule. This is increasingly important because the United States grants patents to the first inventor to file, so getting your application on file is critical—the last thing you want is for someone to come up with your idea later than you and beat you to a patent because they filed first. (Dan Lievens at 3DL Business Studio wrote a blog post on this topic that summarizes the first to invent issue well.)
  • Establish a filing date for the purposes of prior art that will be cited in the US and international patent offices. The provisional application’s filing date is the date from which the US Patent and Trademark Office measures whether references can be cited as prior art, that is, whether a reference can be used to argue your application is not novel or non-obvious.
  • Give you time to market your invention, test the market, raise money, contact manufacturers, and build your business. The catch is that once you file the provisional application, you start a one year clock ticking until you must file your nonprovisional application or you lose your filing date.
  • Keep your invention secret, if you want. Your provisional patent application is kept confidential in the US Patent and Trademark Office until any nonprovisional patent application publishes or until any eventual patent issues. Thus, if secrecy is your goal at the moment, you can file the provisional application and continue to keep your invention secret.

Provisional patent applications DO NOT:

  • Give you the right to exclude others from making, using, or selling any product. The provisional application grants no right to exclude and there is no such thing as infringing a provisional patent application. Only a patent grants a right to exclude and a patent is the end result of a nonprovisional patent application, not a provisional patent application.
  • Mature into patents. Provisional patent applications do not mature into patents. If you file a nonprovisional application within a year of the provisional patent application’s filing, in a sense, they may eventually mature into a patent.
  • Receive examination from the US Patent and Trademark Office. The USPTO will only review your provisional patent application to confirm that you have met the formalities requirements. It does not review your provisional application for patentability.

Provisional patent applications do not need to meet all of the standards of a nonprovisional patent application, and for that reason they are less expensive to file. But provisional applications must still meet certain legal standards.
Requirements of a provisional patent application:

  • a written description of the invention that complies with all legal requirements of 35 USC 112,
  • any drawings necessary to understand the invention in compliance with 35 USC 113, and
  • formalities requirements such as the title, identification of the inventors, correspondence address, and whether there is a government ownership interest.

If you have questions, contact me.
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