Imagine this: you’ve worked hard to develop a brilliant new technology or process. You built a solid team excited to make real impact through FoodTech, and you head to a conference to tell the world (or a small crowd) about it. Only later do you discover your conference presentation means you can no longer file for a patent – leaving your startup unprotected and exposed to competition.
IP can be crucial for FoodTech startups and their investors, in everything from safeguarding competitive edge to boosting overall investor confidence. And in FoodTech in particular – it’s far from straightforward. We sat down with expert patent attorney Dr. Nathalie Friedman, a founder and senior partner at the Fisher Friedman IP Group, with B.Sc., M.Sc., and Ph.D. degrees in Molecular Biology. Nurit Ben spoke with her on when to file, how to get it right – and the fatal mistakes to avoid.
Let’s start with the basics – practically speaking, what’s the real purpose of patents?
I think it’s not what people usually assume. The legal aspect of patents – preventing others from pursuing your invention and taking them to court – is typically not the main issue. As I see it, patents are a key business tool, and for many startups it’s their main asset. Why? First, most large companies don’t like to infringe patents. They may steal your idea, but if you have a patent on it – even if it’s difficult to enforce – they try to avoid infringement. It’s much easier and cheaper for them to license or buy the technology or the company than to enter a lawsuit. So, it strengthens you in that way, but it also opens up unforeseen opportunities. Take the big companies who do go to court when their patents are infringed: they may want your patent portfolio to protect something they have, which may not even be related to what you originally thought the patent was for. Another case is bilateral agreements in the form of, “I will allow you to utilize my patented technology if you allow me to utilize yours.” And of course, patenting may also have a pre-emptive effect – if you don’t patent your technology, somebody else may do it first.
How does IP in FoodTech differ from other areas of tech?
In a sense, you could compare FoodTech patents to pharma in that you often have a recipe and multiple ingredients, some of which can be substituted with other ingredients. But in pharma, even a minor change in composition often requires going through the regulatory process again, proving safety and redoing all the clinical test results. That’s a huge blocker of competition and provides great strength to patents even if they are rather narrow. In food, you don’t have that extra protection, so you need to be more careful when defining your invention. It’s important to boil down the core of your invention: is it the taste profile? A specific ingredient? A combination of ingredients? A texture? An important question that needs to be asked for recipe-like patents is whether all ingredients are equally important. So patenting FoodTech requires a unique balance between identifying and disclosing the specific uniqueness of your product, while at the same time leaving out unnecessary aspects. A lot of out-of-the-box thinking is required.
How do you know if you need a patent in the first place?
I usually say that if you’ve solved a problem, you should consider a patent. When you’re at the idea level, it’s probably not new. But if you’ve engaged in the process of trial and error and it eventually succeeds, that’s when a patent usually comes in.
So at what stage should FoodTech startups begin considering their IP?
Timing is everything. There are interesting cultural differences; Israelis tend to file early in the development process, while Europeans do it at much later stages. Americans tend to fall somewhere in between. If you go too early, at the idea stage, you probably don’t have an actual working invention. But you also shouldn’t wait until you have a final working product to file a patent application. Quite a few times I’ve encountered companies that started a pilot sale of their product before filing a patent application, and then their ability to get it protected is much lower. I like to use the provisional patent model. It’s the cheapest way to get a patent application on file and doesn’t have formatting requirements. Then you have a year to fill in the blanks, and you have at least planted the flag early on, because it’s a very competitive world and there’s a lot of hype around FoodTech.
Let’s briefly break down the key types of patents FoodTech startups and investors need to know.
In FoodTech many inventions are either directed at a new composition/product, or a new process of production. As much as possible, I aim to protect the product. Product claims are typically stronger than process claims since they’re easier to police. If a competitor is selling your product, you can buy it and analyze it. But to determine whether a competitor uses your process is much harder – and gaining access to a production facility is not an easy task. An exception is processes that leave a fingerprint. For example, if using your process results in generation of an entity that is not obtained using other processes then it is far easier to police, and the value of the process patent increases accordingly.
What would you say is the most important piece to getting it right?
As an inventor, it’s crucial to think: what is really the strength of my invention? Not just what my final product is, but to really go into its essence. It might be around a certain ingredient you use, like pea protein – and anyone who swaps the pea protein for something else will get a really different product. In that case I would care less about all the other ingredients and focus on the pea protein. In other cases, a taste profile of a product may be reached in various ways, in which case the profile itself may the target of the patent. The goal is to claim the specific essence(s) of the invention so that, if you were to design around them, it would result in a different product, and preferably an inferior product. That helps protect your competitive edge.
Another key question for getting your application right is “what am I going to sell?” Even if my invention is in the production process, if what I’m going to sell is the product generated by the process, then how can I protect the product? For example, with B2B food products, the end product sold in the supermarket is not the product supplied to the B2B client. In this case it may be very difficult to know if somebody included your product in the final product. So you need to think carefully: what is the potential use of my product? How will my product influence the final product? You have to protect the B2B product itself, but also in the context of the B2C product.
Are there cases where you end up recommending not to file, to keep something secret?
As a patent attorney I believe in patents as a major business tool, so more often than not I recommend filing. But filing a patent application does come at a price, and that price is publication. You have to consider the pros and cons before moving forward. An important factor is enforcement: will you be able to prove that someone is using your invention? Let’s say you developed a unique fermentation process for the production of a food ingredient. My question would be: how does the process affect the final product? Will you know that the product was produced using your process? Does it leave a trace? If not, process patents can be hard to enforce, and you should at least consider whether filing a patent application is the right choice.
Typically, we always try to see if we can somehow get a product claim out of it also. Let’s say you’ve developed technology which makes it much more cost efficient to produce a cultured milk, but the milk is the same product as the one already sold in the supermarket. Should you file a patent or not? There’s no simple answer. You may want to keep it a trade secret, because a patent may be difficult to enforce. But I would usually recommend filing because trade secrets are problematic. First, the CocaCola era, where people started and finished their professional career in the same company, is over. It’s now much more difficult to keep a secret than it used to be. And you have to prove you took all kind of measures to keep your trade secret a secret, which is also costly. The other problem is that somebody else may arrive at the same invention, file a patent, and actually prevent you from doing what you invented – which is always a really unfortunate situation.
What about geography? Do startups need to consider in which country to file their patent?
There are two patent treaties to know. The first is the Paris treaty, a very old treaty that almost all countries in the world belong to. It gives you a year from the filing of a first application to request filing in other territories. That’s what we call the priority year, so that you don’t have to rush and file many applications simultaneously. The second treaty is the PCT Treaty, an international patent application. There’s no such thing as an international patent, but this does give you an additional one and a half years before you have to enter the so-called national phase, into all the different countries which are members of the PCT treaty. So that solves the “country of first filing problem.” Regarding where to file the applications globally, I try to be conservative – because patents quickly become very expensive at the stage where each country independently examines your application. The main factor is market – go for the big ones. Once you’ve covered them, you prevent most competition. A second factor is the location of your main competitor. If your competition is in a country that isn’t a main market, I would make a thorough evaluating cost before deciding if you want to go ahead and file there or not. For my Israeli clients I typically recommend filing in Israel. The FoodTech scene is small, people move from job to job and talk; and filing in Israel is relatively cheap. In fact, as Israel is considered a FoodTech hub, non-Israeli companies may also consider filing in Israel, even if it’s small in terms of market size.
What should people know about finding the right person to guide the process?
You really need to have a trust relationship with your patent attorney. You have to trust that they will tell you not to file a patent application, if that’s their recommendation – even if it means they lose business. Though your patent attorney is a service provider, I think it’s crucial you feel that he or she is part of the team – otherwise, you’re more likely to get your application wrong. Another important tip for inventors is to request your patent attorney write, in layman’s terms, three advantages of your invention. If they can’t, then they didn’t truly understand what it is. Unfortunately we see that quite often. Your patent attorney must understand both the technology and the business model of the company, and for that to be the case, drafting a patent application is not just an assignment – it’s an interactive process.
Finally, let’s talk mistakes. What are the fatal ones to avoid?
One of the biggest mistakes is that companies publish their invention without patenting it first. If you go public with your invention – even at a booth at a conference – or you already put the ingredients on the product label, and you didn’t file a patent application first, you won’t be able to do it anymore because the invention is already out there. Now, maybe the application examiner will not find it and you might still get your patent. But if your product becomes a blockbuster, somebody will certainly remember that you disclosed it before filing the application, and they will be able to invalidate your patent. Filing too late is usually a bigger mistake than filing too soon.
The other mistake is to disclose too much in the first application. Say you disclosed all your different ideas, maybe three or four inventions, and then a year passes. A year goes by fast, and you are ready to proceed with one or two of the inventions, but the third and fourth stayed at the idea level. So, what happens? The patent application is published with all four inventions, and this publication will be enough to prevent you from getting a patent in the future, while the initial invention will not be accepted as it was not sufficiently disclosed. So be realistic about what you think you can do in a year. If you have more than one invention, consider filing them as separate provisional applications, and then in case they are all sufficiently mature you can decide to combine them into one application to save cost.
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