USA: IP Considerations for the Food and Beverage Industry Series: Patenting Natural Products Used in Unnatural Ways

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.

Article Series: IP Considerations for the Food and Beverage Industry, patent eligibility, natural products