Ensuring you don’t bite off more than you can chew: navigating third-party IP rights

Protecting intellectual property (IP) by way of patents and registered design rights is currently underexploited in the food industry.  However, there are certainly a few businesses building broad IP portfolios encompassing numerous aspects of their operations, such as the food products and recipes themselves, factory machinery, and even food packaging.

We have published a number of articles which explore the benefits of protecting your IP – but what about the IP of others?  How can you minimise the risk of a competitor preventing you bringing your product to market?  

The answer to these questions is to perform IP due diligence.  Ideally, this should be built into your product development process, and be a key consideration before entering a new territorial market.  A patent attorney will be able to provide a freedom to operate opinion, identifying any relevant patents or designs that may encompass your food product, packaging or other activities (e.g. carrying out your method of manufacture). In the absence of such IP due diligence, money and many man-hours can be wasted on developing a product, only later to receive a legal challenge from a competitor shortly after launch!

If relevant IP rights are identified, then this is rarely an absolute impediment. In many instances a patent attorney can suggest (potentially small) changes to your product to design-around these existing IP rights, so that you can proceed to launch with little disruption and peace of mind. Therefore, it is important to perform this analysis at an early stage in development. Alternatively, if a design-around is infeasible, there are measures that can be taken to attempt to invalidate (or as a last resort, seek permission to use) the existing IP.

Needless to say, performing appropriate IP due diligence provides you (and your investors) with increased legal certainty and confidence in your product launch.

Our top tips

• Never overlook competitors’ IP rights: to do so risks investing in developing a product or process which may already be subject to patent or design protection. Resulting court proceedings can be extremely expensive and time consuming, and are best avoided.
• Engage with a qualified patent attorney: conducting a thorough investigation and analysis of the patent literature will provide a valuable overview of the IP landscape, and the resulting increase in commercial certainty can improve the value of your business (particularly from an investor’s perspective).
• If relevant IP rights are discovered don’t panic: invalidation or design-arounds may be possible, alternatively a licence from a patent holder to use the protected technology or design (usually in return for royalty payments) may be possible.
• Consider designing-around the identified IP rights: making changes to your product or process can avoid infringing a patent or design. IP is full of nuances which can be readily identified and exploited by the assistance of a qualified patent attorney.
• Always protect your own IP: the opportunity to ‘cross-licence’ then becomes available, which can be of significant help for negotiating favourable licensing terms.

IP due diligence is of vital importance for legal and commercial certainty, even more so as innovation and competition continue to grow in the food industry.

For more information, contact the authors – David Hobson and Lionel Newton – directly, or visit our specialist food & beverage page.