??How to protect your IP on a budget: A primer for foodtech startups

By Elaine Watson

In the world of foodtech, defining and protecting your intellectual property (IP) is mission critical. It factors into business plans and can be pivotal to securing investment. But how do you do it on a budget, and how do you avoid making costly mistakes?

For a quick primer, we caught up with patent attorney Dr. Eran Noah at Noah IP (tagline: “Innovation is priceless, but IP protection comes at a cost”). The former director of IP at animal-free dairy startup Remilk (Remilk), Noah has a Bacherlor’s degree in Life Sciences, a Master’s in Molecular Biology & Microbiology, and a PhD in Protein Biochemistry & Structural Biology. He is also an IP mentor at the The Good Food Institute (Good Food Institute). ?In our 15-minute chat, we covered:

• What is patentable and what’s best left as a trade secret?
• How does the filing process work?
• What costly IP mistakes do startups make?
• What is an ‘IP strategy’?
• What’s a fractional IP director?

AFN: What’s patentable?

EN: Any innovation in a technological field can be patented, theoretically, as long as it is new, original and inventive, such that a common practitioner in the field would not have thought about it during his regular business activities. He would have to make at least one step of innovation or innovative thinking in order to reach this innovation.

AFN: When should something be left as a trade secret?

EN: As a general rule of thumb, if you believe a piece of information or know how or innovation can be contained within your company and cannot easily be reverse engineered from the products and services you’re offering for sale, that’s a strong indication to keep it as a trade secret.

The whole world drinks Coca Cola but no one knows the recipe. And believe it or not, no one can reverse engineer it from the end formulation.

AFN: In the case of a precision fermentation startup making an animal protein in a microbe, what can be protected?

EN: The GMO itself, its genetic modification, its genetic makeup, can be patented. You can also protect the specific procedure, fermentation protocol, or upstream protocol to get the best out of your GMO. Then you have the downstream protocol. How do you isolate and purify the protein of interest?

If the protein itself is identical to the corresponding animal protein, it’s considered a product of nature, so it’s not patentable per se, but if you use the ingredient in a new recipe to produce a new edible application such as a non-animal yogurt, then both the recipe and the actual formulation will be patentable.

AFN: If you are producing, say, a specific animal protein in yeast, does that mean you can stop competitors from producing the same protein in yeast via a patent?

EN: The days in which patents in these fields are so wide that they preclude others from practicing the same in the same field are long gone.

Nowadays, because of the wealth and the scope of the prior art, patent protection is no longer given with a very wide scope. Most likely you’ll get a patent on your specific GMO and the specific use of this specific GMO to produce a specific protein, maybe even under a very specific upstream protocol. But you having a patent to exclude others from using your specific GMO and specific fermentation protocol does not exclude others from using a slightly different GMO in a slightly different protocol.

You can no longer obtain patent protection for concepts.

AFN: What’s a provisional patent application and why would you file one if you ultimately have to follow that up with a regular application?

EN: Many companies decide to file a provisional patent application just to ‘save the date’ so you have a formal filing that shows the specific date you have put your innovation into practice or at least conceived an innovative idea. This gives you another 12 months to improve on your invention. Over that time, you can identify it better, you can define it better, and then you can file an international PCT [patent co-operation treaty] application that will give you more time to decide what countries you would like to protect your invention in.

When you file a PCT?application, you have 30 months [or 31 in Europe, Canada, and Australia] from the priority date [the date of the earliest filing, such as a provisional application] to enter the national phase in the countries where you seek patent protection.

The majority of companies file a provisional application right after they make their invention, then 12 months later, they file a PCT application, and 18 months after that, they file national phase, jurisdiction-specific applications, which are copies of the international patent application.

AFN: So there’s no such thing as an ‘international patent?’

EN: Exactly. It’s a common misunderstanding.

AFN: Can you file a patent application too early?

EN: Filing too early may cause several problems. One is you don’t have really an invention, you just have a concept. You don’t have any idea how to put it into practice. The second one is that you have a basic grasp of an innovation, maybe you’ve done one or two experiments and got a positive result, but you don’t know where the invention starts and when the invention ends, because nothing in technology always works as planned. So you need to not only identify the invention but also define the invention. Which particulars make it work, make it tick, and which particulars do not.

If you file a patent application too early, you are at risk that your description of the invention is incomplete or flawed. If either one happens, the patent examiner may not grant you a patent.

AFN: What is an ‘IP strategy?’

EN: A strategy doesn’t just tell you what you’re doing now, it explains why you’re doing it, what you should do, when you should do it, and where you want to go. If you’re just doing anecdotal IP stuff, where you file a patent application regardless of what you’re already filed, or just to please your investors or your VP of R&D, you won’t get a cohesive IP portfolio.

One patent will not support another. You may get a product that is supported by multiple patents and you may get other products that are not supported by any patent because they fell between the cracks.

Once you go commercial, you don’t want to leave any anything to chance. You want to know that you are covered, that all your value chain is covered, with some technologies protected by patents, and there is a reason for that, and some technologies protected by trade secrets, and there is a reason for that.

AFN: What are some of the common mistakes that you see when it comes to IP?

EN: A common problem with CEOs and business development managers in innovative startups is that they love to talk. They talk with investors, potential investors, friends, clients, and potential clients.

But disclosure of innovations to the public prevents you from securing patent protection. So if you are about to disclose at least part of the innovation in your company, first get the other party to sign NDAs. Or if you are shipping samples, get MTAs [material transfer agreements: legal contracts used to protect IP when materials such as cell lines are transferred between different institutions or companies] just to make sure that sensitive information from your company does not go public and prevent you from obtaining patent protection for your innovations.

AFN: What about protecting IP in joint ventures and collaborations?

EN: Before you sign any agreement with a third party you should define who owns what in terms of background IP, what each company brings to the table and how joint IP and future IP will be divided between the parties. It can be divided based on subject matter, financial interest, or developed as joint IP.

AFN: It’s pretty unusual—and expensive—to have an in-house director of IP at a startup as you were at Remilk. What other options are there?

EN: Most of the companies in this field do not have an IP director and they are often conducting R&D without considering IP aspects. So once or twice a year, when they think they have made a technological breakthrough, they put all the data in a file, contact the nearest patent attorney firm and ask them to draft and file a patent application.

But the thing they are missing is the strategic view of what an IP portfolio should look like for a company of their size, age and technological field.

With a fractional IP director, startups do not have to take the burden of the full employment of a dedicated IP director. What they can do for a fraction of the cost is contract an IP professional who will act as their IP director, either part time or as an external advisor. The important thing is that they have a subject matter expert.

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