December 11, 2018
By Alyssa J. Holtslander; Virginia L. Carron
As an increased emphasis is placed on
protecting our environment and animal welfare, companies aim to make
traditionally
animal-derived products from sustainable natural materials and
processes. When a natural item is processed or put to a new use,
the results
may be patentable. For example, companies are attempting to produce high
quality faux leathers using natural
materials such as cork, mushrooms, and
pineapple leaves, with processes that have minimal impact on the environment.
These products may be used in luxury fashion products or vehicle car seats.
Even though these products are made from natural
materials, the products and
the methods for making the products may still be patentable.
This may seem contrary to prevailing case law
where the Supreme Court stated, in Association for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), that naturally occurring
products are unpatentable. And the Federal Circuit has ruled
that claims to
products that are “not distinguishable from” their natural counterparts are not
patent-eligible, regardless of how
they were made. See In re BRCA1- &
BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755 (Fed. Cir.
2014).
Nonetheless, the U.S. Patent and Trademark
Office (USPTO) recently issued a set of “Nature-Based Products” examples
detailing the types of products that may be patentable. Specifically, the USPTO
examples suggest that if the nature-based
product or composition has “markedly
different characteristics from any naturally occurring counterpart(s) in their
natural
state,” such products or compositions may be eligible for patent
protection. USPTO, Nature-Based Product Examples
(Dec. 16, 2014) at 1.
Furthermore, the USPTO memorandum suggests that a patent may be granted when
the “claim
as a whole indicates that the claim is focused on the assembly of
components that together form the [product], and not
the nature-based
products.” Id.
The burden to show whether the product made
from natural materials is patent-eligible rests on the patent applicant.
Thus,
the applicant should take these standards into account when preparing a patent
application. Specifically, the applicant
should include in the patent
specification a detailed description of how the invention has “markedly
different characteristics”
from its “naturally occurring counterpart(s).” In
addition, the applicant may consider filing claims related to a product,
a
product-by-process, and/or a method, for example, directed to the “markedly different”
invention.
As concerns regarding the environment and
animal welfare increase, consumers are likely to prefer buying sustainable
products, increasing demand for these products. This demand will drive
companies to seek to use sustainable natural
materials in their products (and
sustainable methods to make their products). Thus, it will be increasingly
important f
or those companies to carefully analyze whether their products
contain patent-eligible subject matter and prepare patent
applications that
enhance the likelihood of obtaining patent protection for these valuable
products.
Tags
Article Series: IP Considerations for the Food
and Beverage Industry, patent eligibility, natural products
