Mathys & Squire finds food applications dominate alternative fat patent activity

Patent activity in alternative fats is concentrated most heavily on how ingredients are used in foods, according to analysis presented by Mathys & Squire, with filings also increasing around fat molecules and production processes.

• Mathys & Squire’s analysis found food applications accounted for the largest category of alternative fat patent activity.
• China and the US led activity, while academic and research filings increased, particularly in China.
• The firm urged developers to assess freedom to operate early and agree ownership of improvements before manufacturing collaborations begin.

Lyle Ellis, Head of IP Consulting at the firm, said its analysis showed a steady increase in filings over a 20-year period, including a notable jump in 2020 and 2021. China and the US led activity, followed by Japan and Korea, with the UK fifth.

Speaking during PPTI’s October 22 webinar, The Changing Requirements in Fats – How to Make It Workable, supported by Mathys & Squire, Ellis said the largest category in the analysis covered applications of fats rather than their production.

However, he cautioned against interpreting filing volumes as a direct measure of where the most innovation occurs.

“I wouldn’t say there’s necessarily more innovation in the applications, but there are certainly more patent filings in that area,” Ellis said.

Large food manufacturers may be more familiar with protecting new applications than smaller businesses developing the underlying technologies, he suggested. That could help explain the distribution of filings.

The analysis also showed increased academic and research activity when comparing the most recent five years with earlier periods, predominantly in China.

Ellis said those filings could provide opportunities for companies seeking technologies to license or research partners. Patent data can also help identify prospective investors and acquirers by showing which organizations have an established interest in a particular technical field.

But he also anticipated increased efforts to monetize research portfolios, potentially including patent assertion entities.

For developers, understanding that activity requires more than identifying a published document with apparently relevant content.

“For example, just because a patent application has been published that looks very relevant, you need to check whether it’s actually valid, whether it’s even been granted, whether it’s in force, and whether there are opportunities to work around it,” Ellis said.

Laura Clews, a Partner at Mathys & Squire, explained why securing a patent does not establish that a company can commercialize its invention without infringing someone else’s rights.

A new fat composition could qualify for protection while falling within the broader definition of a fat covered by an earlier patent. Similarly, a new production method could incorporate an intermediate step already protected by another party.

“This is an inherently negative right. It’s the power to stop somebody, not the right to do it yourself,” Ellis said.

Clews said companies should examine the relevant patent landscape once they have a reasonable understanding of their proposed product or process. Doing so can help them assess different development routes before committing substantial resources.

Where potential conflicts arise, options may include changing the product, redesigning the process or seeking a license.

She also recommended a further search nearer launch to identify developments since the initial assessment.

Protecting a company’s own work involves a separate set of decisions. Clews said potential patent subjects could include a fat composition, a microorganism, growth medium, production method, individual processing step, application or piece of equipment.

Identifying the commercially important invention is essential. A useful step within a larger process may have applications elsewhere, making protection of that step more valuable than a narrowly defined account of the complete process.

Trade secrets offer another route, particularly for knowledge that is difficult to discover by examining a finished product. Clews said secrecy can continue indefinitely, provided the information remains confidential, but does not prevent independent development or reverse engineering.

Ellis emphasized the practical demands of maintaining confidentiality, including controlling access among employees and contractors.

“One of the most common areas I’ve found is things like high turnover of staff or using lots of contractors. Those are the kinds of areas where leakage can occur,” he said.

Manufacturing relationships introduce further questions, particularly when a partner develops an improvement that makes production commercially viable.

Ellis said ownership and rights to use those improvements should be addressed before work starts. Otherwise, a developer could become dependent on a supplier without having secured the rights needed to take the improved process elsewhere.

Those discussions can be overlooked when companies focus on manufacturing terms.

“It’s not just about price, volume, and delivery times. The IP is a really important aspect too,” Ellis said.

“That’s something that needs to be discussed and traded.”

Asked for his final recommendation to a company preparing to commercialize a new fat, he said: “Understand what you’re negotiating and make sure it’s documented.”

Register here to watch The Changing Requirements in Fats – How to Make It Workable on demand and hear the full discussion with Nourish Ingredients, Melt&Marble and Mathys & Squire

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