Patents can offer supplement brands competitive advantage

This is the second article in a three-part series highlighting legal issues and bottom-line challenges that impacted consumer-facing products — including dietary supplements, food and cosmetics — in 2023. This series offers key takeaways and strategies to help you get ahead of potential problems in the coming year.

Protect your patents

Protection of intellectual property (IP) can be a key component in any fitness, health, personal care, beauty or food company’s portfolio of assets. Part 1 of this series highlighted benefits to a company’s bottom line of a strong, carefully executed trademark strategy.

The same may be said for patents, which can provide a critical competitive advantage and a major point of differentiation in hypercompetitive markets. The process starts when an application to obtain a patent is filed with the U.S. Patent and Trademark Office (USPTO).

While the process may seem daunting, an experienced IP legal team will seamlessly guide an applicant or inventor through it and help develop strategies that will protect and strengthen a company’s position in the marketplace.

Record of invention

One good way to maintain business records is to implement a policy capturing the best results of R&D investment. As practiced among most Fortune 500 companies, prospective inventors must summarize their ideas for review by their in-house legal department, even before the results are released in technical papers or discussed in scientific conferences.

Related:Dietary supplement firms should prepare trademark strategy in 2024

The ideas are provided in technical detail in a written disclosure that constitutes a “record of invention.” If an idea has potential merit, legal and scientific minds are joined in identifying inventors and drafting a patent application. 

Even if an inadvertent public disclosure is made, U.S. patent laws provide for a one-year grace period spanning the gap between disclosures and application for patent rights. If these general principles are applied, the dollars spent in R&D do not remain a sunk cost but can mature into tangible IP assets.

Patent claim scope

An experienced patent lawyer will ensure any potential applicant knows that the exclusive rights obtained with a patent are defined by the “claims.” While patent claims differ from product and marketing claims, they define the metes and bounds of the rights exclusive to the patent owner. 

A patented invention in a utility patent may be an article of manufacture, a machine, a composition, or a method of use or process. Special categories of patents include ornamental designs, and plant patents for new and distinct asexually-reproduced plants.

Each word of a patent claim is chosen specifically to demonstrate the novelty and distinct features of the invention, e.g., a dietary supplement composition containing ingredient A, ingredient B and an inert carrier. 

While each patent claim presents descriptive boundaries that may not be crossed by competitors, some claims are broad and deep, while others are much narrower (and shallower). It is a maxim that the “best” claim covers a composition of matter, meaning the composition is protected against any unauthorized use for any purpose.

In contrast, process claims are limited to the specific “steps” as listed out. In the end, the patent claim provides a right to exclude others — for a limited time — from making, using or selling a claimed invention without the patent holder’s express consent or license.

Renewals

Once obtained, a patent must be maintained by paying maintenance fees, which are essentially taxes. A U.S. patent, once granted, is automatically enforceable and remains valid until the end of four years from the date of issuance, by which time the first of three maintenance fees is required to remain active.

Fees are also due by the end of eight years and 12 years, respectively (and increase in stepwise fashion), by which the patent remains in force, until expiration (which is 20 years from the original filing date). If any of the fees are missed, the patent will expire early, and patent protection is lost.

In foreign countries generally, the renewal system adopts an annual schedule, resulting in an annuity payment requirement. This is effectively a tax collected by the respective patent agency in each country — again in ascending amounts — until the expiration of the foreign patent (which, as with the U.S., is 20 years from the original filing date).

Patent vs. trade secret

Another avenue for protection is to hold as a trade secret any information that a company does not want its competitors to know. A patent is made public by definition, and by necessity, since the claimed invention must be described, and the general public notified of which exclusive rights are fenced off. Also, as previously mentioned, patent rights expire, while a trade secret — if carefully maintained — does not ever end and may be exploited continually.

Well-known examples include consumer recipes and formulations, which companies aim to keep secret. The Defend Trade Secrets Act of 2016 (DTSA) confers protections to manufacturers and is undergirded by U.S. patent law, which defines certain “first user” rights, such that prior users may continue to practice their commercial activities, even if another party secures IP rights.

Take note that patents first owned by universities are exempted from a prior user rights defense to infringement. That is, if a university first obtains a patent covering a company’s trade secret that has been implemented or is in commercial use, the company (with the trade secret) likely cannot assert first user rights.

If a product is difficult to reverse engineer, or if related business information is too valuable to release when weighed against public knowledge, a trade secret may be the best option. Thus, maintaining trade secrets is a complement to patent protection and may be used in accordance with a strategic business plan. 

ATW takeaways

Similar to trademarks, patents are an essential component of IP, and an effective patent strategy should also be at the top of your list for 2024. While patent regulations may seem complicated, a good patent strategy doesn’t have to be.

Put your R&D dollars to work with experienced counsel to review your record of invention, ensure the scope of your patent claims is appropriate, and establish a maintenance plan. Finally, consider how legal protections for trade secrets might work to your advantage.

Next up

In Part 3, we’ll address regulatory issues that should be on your radar this year (if they aren’t already).