The recipe for success: a platter of IP rights to protect your food and drink products

There is a range of IP options available to manufacturers looking to protect their treasured recipes, whether through copyright, a trade secret or a patent, but how do you know if your tasty treat is eligible and, if so, which IP right you can secure? In this article, published in Baking Europe in December 2020, managing associate Laura Clews provides a brief overview of the options available, along with benefits and pitfalls of each for you to chew over…

The festive period is now upon us, so thoughts turn to spending time with our families, decorating the tree and, of course, food. At this time of year, food and drink manufacturers provide unique twists on classic treats and decadent desserts designed to tickle every taste bud. It is common to spend more on food and drink during the holidays and perhaps even treat ourselves to some luxury priced goods. Statistics by GoCompare Money predicted that, collectively, British households would spend £4.7 billion on food and drink products over the Christmas period in 2018. Accordingly, for manufacturers that manage to produce the ‘must have’ items of the year, Christmas can be a very profitable time. But how do you prevent other manufacturers copying your culinary creations and reducing your market share? Essentially, is it possible to protect a recipe?

Can I copyright a recipe?

Copyright is an exclusive legal right that arises automatically on the creation of an original work and can be used to prevent others from using or commercially exploiting this work without permission. Copyright protects, amongst other things, literary creations, artistic works, original non-literary written work and the layout of published editions of written works, but does this IP right extend to recipes?

Unfortunately, under UK law, copyright protection does not encompass a collection of ingredients or a list of instructions (such as the method steps contained in a recipe which are considered merely functional). Therefore, following a recipe to produce a particular food or drink product would not infringe any copyright of the original author.

Some copyright protection may be provided in the particular literary expression used to describe the method steps of your recipe, however, this protection would not prevent others from publishing your recipe as long as it has been expressed in a different way.

General concepts or ideas cannot be protected under copyright either, and so producers of next year’s cronut would not be able to prevent other companies constructing and/or publishing recipes to make the same or a similar treat (unless other forms of IP protection are in place).

Copyright protection afforded to an author is dependent on national law and so can vary depending on the country in which the original work is considered, however many countries around the world are Contracting Parties to the Berne Convention. The Berne Convention defines minimum standards of protection under copyright (i.e. the same protection must be given to works originating in other Contracting States as would be provided for works originating in that state) and the minimum duration of protection (generally 50 years after the death of the author with the exception of applied art, cinematographic and photographic works) under copyright law.

Is it best to keep recipes as a trade secret?

Trade secrets encompass any information that is commercially valuable to a company, including secret recipes. In accordance with The Trade Secrets (Enforcement, etc.) Regulations 2018, to ensure that your recipe is covered as a trade secret you simply need to demonstrate that:

(a) it is secret in the sense that it is not generally known among, or readily accessible to, people who normally deal with that kind of information

(b) it has commercial value because it is secret, and

The requirement of ‘reasonable steps’ can include password protecting documents containing essential information and marking them as ‘confidential’, ensuring trade secrets are protected in employment contracts, using confidentiality agreements – such as non-disclosure agreements – when discussing confidential information with anyone outside your company, limiting the number of people with access to the information, and training staff members on how confidential information should be handled.

While there is no uniform legal framework globally for a ‘trade secret’, in general, unfair practices with regards to confidential information, such as breach of contract or breach of confidence, are considered actionable. Similarly, the remedies available for unlawful acquisition and use of trade secrets can vary based on the legal system in place. For example, trade secrets in the US are governed by The Economic Espionage Act (EEA), under which the theft of a trade secret can result in imprisonment and fines.

What are the benefits of trade secrets?

The basic requirements to ensure that your recipe is classed as a trade secret are simple to implement, cost-efficient and provide effective protection in some cases. Furthermore, the protection provided by a trade secret will remain in force for as long as that information remains secret.

In addition, ownership of a trade secret can be used as an effective marketing strategy, creating hype and mystery around your product. Some of the best-known examples of trade secrets in the food and drink industry include recipes for Coca Cola and the KFC coating (containing a blend of 11 herbs and spices). Both companies publicise the extreme methods employed to ensure that these recipes do not fall into the wrong hands, emphasising just how special and unique their products are. For example, Coca Cola states that the only notation of its recipe is stored in a purpose built vault at the company headquarters in Atlanta and only two senior executives know the secret formula at any one time (these staff members are, of course, forbidden to travel on the same plane). Similarly, KFC has publicised that its secret recipe is secured in a vault in Louisville, which has been reinforced with two feet of concrete to ensure that competitors cannot tunnel or drill into the vault.

In the event that a third party unlawfully obtains or uses information classed as a trade secret, possible remedies available to the owner under UK law include: obtaining a court order (i.e. an injunction) to prevent the use or disclosure of the trade secret, recall or destruction of any infringing goods from the market and monetary relief in the form of damages.

What are the potential issues with trade secrets?

Trade secrets can be useful where it is difficult (if not impossible) to derive the ingredients or process used to produce the food or drink product. However, they do not provide protection if another company legitimately produces the same product or manufacturing process. They also do not provide protection if a third party is able simply to reverse-engineer the product.

Further challenges may arise as a result of the UK’s Food Labelling Regulations, which require food and drink products with two or more ingredients (including additives) to provide a list of the ingredients in order of weight (with a few exceptions). Accordingly, if your secret recipe relies on the inclusion of a specific ingredient, you may be required to publicly disclose this information.

For some companies, patents may provide a more reliable form of protection particularly where a consumable product could be reverse-engineered, if the essential ingredients must be disclosed because of UK Regulations, or if there are other competitors/potential competitors working towards the same target product.

What protection do patents provide for recipes?

A patent is an IP right granted by a specific country’s government for a limited time period, typically 20 years from the date of filing. Where a patent is directed to a product, it allows the owner to stop others from making, using, offering for sale, selling, or importing that product within the territory for which the patent has been granted. For a specific process, the owner can prevent others from using that process within the relevant territory without the patent owner’s consent.

What can be protected?

A variety of food and drink inventions are suitable for patent protection – for example where the product has an improved taste, texture or appearance whilst reducing fat or sugar content; a combination of ingredients which produce a synergistic effect; a non-obvious substitution for a commonly used ingredient (for example, E numbers); and methods of altering the flavour profile of products.

Faster or more cost-effective manufacturing methods; methods of producing new products or method steps which provide an unexpected result can also be suitable for patent protection.

In the same way that trade secrets can be used to publicise particular food and drink products, owning a patent can also increase public awareness and interest. In one example, as highlighted in numerous articles/blog posts, Nestlé developed a method of producing porous particles containing sugar which could be used to reduce the sugar content of confectionery without detrimentally affecting the sweet taste expected by consumers (see WO 2017/093309).

What criteria do I need to meet?

In order to obtain a granted patent, most territories require the inventor to at least demonstrate that the invention is novel, involves an inventive step and is capable of industrial application.

Novelty

The claimed invention must not be publicly disclosed before the date on which the application is filed -e.g. publicising your invention on the company website/blog/social media, selling the product, or displaying it a tradeshow (where someone might determine the novel features from the product itself) could invalidate any later filed patent application.

For this reason, it is essential that manufacturers avoid discussing the invention with anyone outside their company (e.g. investors or suppliers) before the date on which the patent is filed, or, if this cannot be avoided, ensure that confidentially agreements are in place beforehand.

Inventive step

The claimed invention must also provide a non-obvious solution to a technical problem in view of what was known before the filing date of the patent application. Essentially, the invention must be shown to go beyond standard development within that field. The assessment of inventive step can vary depending on the particular jurisdiction in question and so it is often beneficial to seek professional advice from a local attorney when determining whether your invention would likely be considered to meet this requirement.

Industrial application

It is necessary also to show that the claimed invention is capable of exploitation within an industry. Most products and processes within the food and drink industry inherently meet this requirement.

What are the potential issues?

Patenting inventions can be a costly process, especially as the number of territories in which you require protection increases, so it is beneficial, particularly for start-up companies, to carry out a critical assessment of where their product or process will be sold. Alternatively, if their company does not intend to exploit the invention, it is important to determine where they are most likely to license the product/process.

As patent protection typically only lasts for 20 years from the date on which the application is filed, it is worth noting that upon expiration, the recipe, product or process can be freely used by other companies.

Whilst there are different options available for protecting the delectable creations developed by food and drink manufacturers, the type of protection best suited to these products can depend on the product itself and, of course, the commercial strategy of the business.

This article was written for the winter edition of Baking Europe on behalf of The Chartered Institute of Patent Attorneys (CIPA).