featured in this issue - NZIFST - The New Zealand Institute of Food ...

Protecting IP in novel food ingredients
and derived products
Dr Shayne Nam, Technical Adviser, James & Wells Intellectual Property
LEGAL MATTERS
Food ingredients are the life blood of the food industry, and many commercial
products contain “secret ingredient(s)” which their manufacturer
claims give them a competitive advantage over rivals.
In today’s market of fast moving consumer goods, the push to develop
or discover improved ingredients that act as substitutes for natural
agents while providing benefits such as increased nutrition and shelf
life has never been stronger. For that reason alone, food ingredient
manufacturers devote a large amount of resources to continued R&D
to discover that vital ingredient.
Once they have developed a novel food ingredient(s) or food product
containing them, and want to maintain the advantage over competitors,
there are some options available.
Keep as a trade secret?
Trade secrets are commonly used in the food industry to protect ingredients,
compositions, formulas, and methods of manufacture or
processes. The use of trade secrets may be applicable where the product/process
does not meet certain patentability criteria. An essential requirement
of trade secret protection is that total secrecy is maintained.
This requires that people inside the organisation do not divulge sensitive
information to anyone external.
In some circumstances, trade secrets can provide advantages over other
types of intellectual property (IP) protection such as patents. These
include no registration costs, and protection will remain indefinitely
subject to the information remaining a secret (compared to 20 years
for a patent).
However, there are several disadvantages associated with the use of
trade secrets. For example, vigilance must be constantly maintained
to ensure confidentiality of the secret. In practical terms this can be
difficult depending on factors such as the nature of the secret, and the
loyalty and trustworthy nature of employees.
Coca-Cola is often touted as an example of a successful trade secret in
action. However, with recent advances in analytical techniques, and
the emergence of Pepsi-Cola, whether it still is, or will remain a trade
secret is open to debate.
Other food ingredients and products containing them may be readily
assessed and the ‘secret ingredient’ obtained via ‘reverse engineering’.
In fact, some companies specialise in reverse engineering food ingredients
and related products. Once the secret has been discovered, any
third party is entitled to use it – only patents provide exclusive rights to
exclude third parties from making commercial use of it.
has developed a new food product which contains a vital proprietary
food ingredient, one way for them to maintain their competitive advantage
is to have an exclusive agreement with their ingredient supplier
to prevent their competitor obtaining the same vital ingredient and/or
composition.
However, a disadvantage of relying on an exclusive agreement is that
it does not prevent a competitor from obtaining information on a new
food product via “reverse engineering” and then producing the same
product using generic ingredients.
In addition, what happens if the ingredient manufacturer goes out of
business or is no longer able to supply the ingredient?
Patents – a viable protection
option
One of the most applicable forms of IP protection for novel food ingredients
and derived products is patents. Patents for novel food ingredients
can be wide in scope and cover many variations of a basic
product or process.
Some successful examples include the patenting of the flavour enhancer
monosodium glutamate (MSG) in 1908, and the artificial sweetener
sucralose in 1976 by Tate & Lyle. More recently, Senomyx (a company
which develops novel flavour ingredients and is the owner or exclusive
licensee of several hundred patents) has recently been granted a patent
for S2383, a unique flavour ingredient which allows the quantity of sucralose
in food products to be reduced by up to 75% while maintaining
the desired sweet taste.
It is also possible to protect a combination of two or more known
ingredients if it can be shown that synergy exists between these ingredients,
or there is an unexpected effect by combining them. Depending
on the degree of inventiveness, it may also be possible to protect
related products which provide similar benefits. Tip Top, one of New
Zealand’s leading ice cream companies, owns a number of patents.
An example includes a patent for its Memphis Meltdown ® ice cream
which combines known ingredients in a unique arrangement (triple
layer dipping using caramel and chocolate).
Patenting food ingredients and derived products provides a wealth of
business opportunities as the scope for on-licensing that patent could
be considerable. The specific advice of patent specialists will ensure
that companies can capitalise on the IP of their novel food ingredients
and derived products. This means they can maintain their competitive
advantage and market edge.
Exclusive agreement with food
ingredient supplier
Most FA 15563 food JAWS manufacturers Food Mag Ad source pth.pdf raw 1 food 21/09/11 ingredients 4:48 from PM specialist
ingredient manufacturers and suppliers. If the food manufacturer
Shayne Nam is part of James & Wells Intellectual Property’s Chemical
and Process Technology Patents Team. He specialises in patents relating
to formulations and compositions. If you have any queries regarding IP
protection, Shayne can be contacted by email on: shaynen@jaws.co.nz
October/November 2011 33