Quote from Martin Schweiger on June 11, 2018, 1:20 pm
That is one of the most difficult cases in the area of IP.
1. Once you file a patent application for the method of making the food, this will be published after 18 months from the filing date (or from the priority date, if an earlier priority is claimed). Everybody will be able to find out what your client does, and your client's competitors can reproduce a similar product.
2. Your client may also be able to obtain a patent for the bacteria and yeasts that were used to make the drink. DNA scans will be necessary, and it is also possible to deposit a microbiological sample of the bacteria and yeasts that were used to make the drink.
3. Enforcement of a granted patent seldom works in such a situation, because small companies cannot easily afford the litigation costs. That is presumably also the case with your client because he is seeking an investor.
4. It is also not recommended to put full trust on NDAs, they never work in practice when it comes to claiming damages because of a breach of confidentiality.
5. The easiest is to keep the recipe and the ingredients secret but then it would be impossible to find an investor or even to receive government grants if you are not willing to show them your invention.
6. Practical advice: If the new drink is made in different stages, to set up separate locations for manufacturing the various stages of the new drink. And to set up security measures for the respective locations where the various stages of the drink are manufactured. An alternative would be to automate some or all of the production processes, that makes it easier to keep it secret.
7. I have seen the following strategy working.
To protect the product IP as soon as possible, having in mind that there are third parties who may have an interest in the same business.
In view of the urgency of protecting the IP, I would suggest to not use government funding and to not show it to any investor or co-operation partner. By doing so, there is a danger that the protection of the product IP gets lost, by revealing it to these third parties.
Then follow this business and IP strategy:
Step 1: develop and document a marketing strategy for the product,
Step 2: start to search, identify and engage with potential investors that might be interested in the product,
Step 3: file a provisional patent application based on information from the “recipe” for producing the product,
Step 4: In order to provide your client with a freedom-to-operate, submitting a defensive publication (a publication which is not easily accessible) using the subject matter, after filing the provisional PCT application,
Step 5: if achievable for reasonable prices, perform a DNA scan, and deposit the microbiological sample of the bacteria and yeasts that were used to make the drink,
Step 6: file an update of the first provisional patent application, by incorporating information about the DNA scan and the microbiological sample of the bacteria and yeasts that were used to make the drink, and filing a second provisional application,
Step 7: Reveal the recipe and the two patent applications to potential investors only after steps 3 - 6 are completed, under Non-disclosure agreements
8. It is of utmost importance that the investor comes in early enough so that he can decide whether to maintain or to withdraw all patent applications before they become published.
9. The above is only an outline of what needs to be done. It is recommended to engage an experienced patent attorney for putting this strategy into practice.