By David Miller
The holiday season is quickly approaching, and many people will gather with friends and family to have a special meal. If you are at a holiday party, desperate to talk about anything other than politics, consider discussing the best IP protection for the unique dishes on the table. After all, recipes are patentable subject matter.
Negotiating with your host to patent the potato salad is rather humorous, but keep in mind the scale of the foodservice industry. Restaurants account for $800 billion each year in the United States, and 7 out of 10 restaurants are stand-alone businesses. There are over one million restaurant locations in the US. For most of these restaurants, the recipe book is the most valuable asset they have. Although this brief blog entry only looks at patents, remember that trade secrets, copyrights, trademarks, and contracts also are important tools in protecting recipes. At Global Patent Solutions, we have seen recipe inventions across the spectrum, from mom-and-pop restaurants and multinational food conglomerates.
Recipes may be patented.
The idea of a recipe as a protectable invention predates our modern legal framework. As early as the 3rd Century AD, Athenaeus (one of the first travel bloggers) indicated that inventors of unique culinary dishes were granted exclusive rights for one year in the city of Sybaris. Similarly, social pressure to give credit to the chef is still felt. Historic examples include Dr. Pepper, and modern examples abound in local food culture. In my family, we all love Cindy’s Chicken Salad, but I don’t actually know who Cindy is.
Modern patent systems treat recipes like any other technology. In the United States, a recipe is patentable if it is statutory subject matter, useful, novel, and non-obvious. Non-obviousness is the biggest hurdle for recipe patents.
1. Is the recipe statutory subject matter?
Statutory subject matter in the US is available for any “process, machine, manufacture, or composition of matter.” 35 U.S.C. §101. Recipes are generally considered statutory subject matter as compositions. In this regard, the composition of a quesadilla is no different than metal alloys and polymers: a combination of identifiable constituents. An example is “Food preparation compositions” (US 6403144 B1) which claims a composition of three agents; although it reads like a chemistry lesson, it is just an oil blend for frying foods.
On the other hand, recipes are often considered a process. The steps are performed to transform raw ingredients into a unified product. The patent behind the infamous Hot Pocket, “Process for making dough products” (US 4761290 A), claims a series of steps to produce a dough product that withstands partial cooking, freezing, and subsequent reheating in a microwave.
Recipes may also constitute a manufacture if the foodstuff has a discernable mechanical structure. “Fried dough product and method” (US 4170659 A) is for a dough shell prepared with rivet-like bonds that prevent delamination of the pastry. The patent for Uncrustables sandwiches, “Sealed crustless sandwich” (US 6004596 A), claims a crimped edge for sealing the contents of a sandwich; although widely criticized and later canceled, the Uncrustables patent is a great example that patent examiners are amendable to claims for food with clearly defined structural characteristics.
2. Is the recipe useful?
Section 101 also includes the requirement that patentable inventions be useful. This is a very low bar in the United States because any use is satisfactory and recipes for food are useful de facto. Thankfully, subjective assessments of quality aren’t material; the flavor and appearance need not be universally appealing. Just remember to include enough information in the disclosure that the public can ascertain the utility.
3. Is the recipe novel?
Novelty is a critical condition for patentability. 35 U.S.C. §102. If the claimed invention identically exists in the prior art, the lack of novelty cannot be overcome.
The gold standard for a novel invention is the inclusion of a truly new component. Recipes can rise to this level but the level of skill for modern food components is extremely high: think laboratory, not kitchen. For example, “Heterotrophic microalgae expressing invertase” (US 8497116 B2) claims a composition of microalgae “wherein the microalgae comprise an exogenous sucrose invertase gene that is codon-optimized for expression in Chlorella protothecoides.” The claimed microalgae is not the product of a home kitchen; novel components in every recent recipe patent are the products of extensive chemical modification or gene editing. It is hard to imagine that there are any simple-yet-novel food components left to invent.
Even if there is no single novel component, recipes may be novel in a strict sense by narrowly claiming the invention. This approach to novelty will pin the invention as whole to a specific and unique chemical composition. Thus my mother’s banana bread recipe is technically novel because it is chemically unique from all other banana breads. Nonetheless, novel narrow claims are only half the battle. Non-obviousness is the bigger obstacle to patenting a recipe.
4. Is the recipe non-obvious?
Even if a recipe is patently novel, differences between the claimed invention and the prior art will be evaluated for non-obviousness. 35 U.S.C. §103. Humans have been preparing food from recipes for time immemorial so the body of prior art for obviousness rejections is expansive.
This creates a unique challenge for patenting recipes that we think of as typical (such as my mom’s banana bread). Recipes for a home kitchen use known ingredients, known steps, and known tools to produce food that is more or less like many other similar dishes. This is the perfect set-up for a traditional obviousness rejection. For example, peanut butter and maple syrup are an obvious combination when you consider that (1) peanut butter and honey are consumed together and (2) maple syrup can be used in place of honey.
Even where the no prior art exists for a particular recipe, many home-style recipes are obvious to try because the success of new combinations is predictable. Consider peanut butter and Sriracha sandwiches. This concoction is obvious to try because the combination of peanuts and chilies was already known in Thai cuisine; adding bread is also obvious because everything is better on toast.
The consequence of non-obviousness is that modern recipe patents generally don’t look like typical food. Modern recipe patents require situations where the level of ordinary skill is sufficiently high that obviousness arguments don’t work. At this time in 2017, most non-obvious recipe patents cluster around the following.
- Hi-tech commercial technologies such as gene editing or chemical engineering (to produce things like microalgae expressing invertase); and
- Addressing problems that are present in industrial food production such as mass production of foodstuffs or animal feed (to prevent issues like dough delamination during freezing/heating cycles).
A patented recipe that you can make at home!
I performed a patent search to identify the approximate date when recipe patents exceeded the skill and tools in a home kitchen. It appears that industrial-type recipe patents completely supplanted home-style recipe patents in the early 1970s. The most recent home-style recipe that I found is “Process for making pretzels” (US 3876815 A).
Karl Kurzius invented a pretzel in 1973 that could be partially baked, frozen, and then baked to completion. The inventor notes that his recipes is essentially the same as the prior art “except for the vinegar” which reduces rest time and alleviates the problems associated with quick-freezing of dough. It is difficult to dissect novelty and non-obviousness from that era because the legal standards and tests were much different. However, that shouldn’t stop us from speculating as to why this patent issued! According to the Bureau of Labor Statistics, in 1973 less than 7% of American households had a separate freezer. Is it possible that frozen pretzels were novel and non-obvious because one of ordinary skill wouldn’t have had a freezer to perform the process?
Whatever the case, send me your favorite recipe patents at email@example.com. As for me, I will make patented pretzels this weekend!
Claim 1. A process for making flavored, soft pretzels, consisting essentially of:
-adding together water, yeast, salt, sugar, shortening, flour, powdered milk, and vinegar, to form a dough;
-adding a flavor ingredient to the dough;
-mixing said dough for about 3 minutes;
-forming a portion of said mixed dough into a desired pretzel shape;
-refrigerating the formed dough for about 30 minutes at a temperature of about 32°F.;
-dipping the refrigerated dough into a solution including sodium hydroxide;
-baking the dipped dough at about 550°F. For about 7 minutes, whereby further baking produces no further expansion of the dough;
-freezing the baked dough, whereby said dough can then be prepared for eating by baking for about 1 minute at a temperature of about 450°F.
Claim 8. The process of claim 1 wherein the dough contains approximately, by weight, 31.22% water, 1.95% yeast, 1.46% salt, 1.46% sugar, 0.99% shortening, 62.44% flour, 0.24% powdered milk, and 0.24% vinegar; and wherein the flavor ingredient is added in an amount of between 2% and 25% by volume of the dough.