Is it the bread or the slicer?

“It’s the greatest thing since sliced bread.” We have all heard it before, but most of us have no idea where this expression really came from. Well, thanks to Otto Frederick Rohwedder of Davenport, Iowa, we are all able to enjoy this truly great invention. But alas, the greatness comes from the novel (and patented) automatic bread slicer, and not the bread itself. After all, bread has been around for thousands of years and most of it is difficult, if not impossible, to patent. Like most great engineering accomplishments, the first automatic bread slicer of Mr. Rohwedder, used to slice loaves at Bench’s Bakery in Chillicothe, Missouri, needed improvements – it fell apart after 6 months of heavy use. His second and much improved machine saw use at Korn’s Bakery in Davenport, Iowa, and resulted in his formation of the Mac-Roh Company to frantically meet demand for his new machine. After receiving patent number 1,867,377 on July 12, 1932 for his “Bread Slicer” and starting a successful business, the Continental Baking Company began selling sliced bread to an eager public under the Wonder Bread label. So why didn’t Mr. Rohwedder patent sliced bread itself?

Bread-slicing machine. 1975.315261.1.

Is a Recipe or a Food Product “Statutory”?

Patents may be granted for any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”¹ A food product falls at least under the categories of a composition of matter or manufacture, and the way in which the food product is produced (“the recipe”) is a process. So recipes appear to be statutory, and fall under one or more categories of what is eligible for patent protection. Most food products and recipes are also useful, even if some people don’t like the resulting taste of that trendy pomegranate quinoa kale smoothie.

The USPTO even has a classification entitled “food or edible material: processes, compositions, and products.” Class 426 is defined as “products and compositions in any physical form which are intended to be consumed by human beings or lower animals in whole or part via the oral cavity.”

…But is it New and Non-Obvious?

A brief review of food patents will reveal that most are for products created not by a chef but by a scientist. To be patentable, an invention must be novel and non-obvious². Ingredients have been combined by humans since before the wheel was invented, and chances are a variant of your killer recipe exists somewhere. Since any cookbook anywhere in the world can be prior art, there is a good chance that your recipe is not in fact new. Even if your exact recipe cannot be found by a tenacious Patent Office examiner, obvious variants of your recipe can most likely be found. Most food products are the expected sum of their individual ingredients, and changing one or more ingredients to achieve a different, perhaps unexpected taste, would be within the capabilities of a person having ordinary skill in the art, and would be obvious.   For example, adding cayenne pepper to a chocolate bar may result in an unexpected taste, but the resulting spicy sweet chocolate product would be an expected result of combining those ingredients, and would be obvious. Of course there is the rare exception that a combination of ingredients produces an unexpected result that would not have been obvious to a person of ordinary skill in the art. Those unexpected results are of course more likely to be discovered by the food scientist mixing up unusual ingredients not often found in Grandma’s kitchen.

Patenting Grandma’s Recipes

What if Grandma had such an unusual family recipe that it could be patentable? Chances are her family recipe, handed down through the generations, has been disclosed in printed form for more than a year, and is no longer patent eligible. Even if the recipe itself has not been disclosed, providing the food product publicly (think family picnic or holiday get together) more than a year prior to the filing date would be a “public use,” which is still a statutory bar to patentability in the U.S.

Is it Worthwhile to Patent a Recipe?

Obtaining a patent is an expensive undertaking, and the non-obviousness hurdle for obtaining a patent on a food product or recipe is high. So is it worthwhile to patent that culinary creation? The answer often comes down to a business decision. It is typically more difficult to obtain a patent for a food product or recipe than for many other inventions. Also, a prior art search³ may not find the non-patent reference that will be used for an obviousness rejection by the examiner. So even if you do obtain a patent, there is a risk that it could be invalidated when it comes time to enforce it against a party who will almost certainly do a thorough search looking for your recipe or obvious variants of it in cookbooks and magazines worldwide.

On the topic of enforcement^4,5, even if you are able to clear the non-obviousness hurdle and obtain a patent on your innovative food product or recipe, who would a potential infringer be? A small diner or grandma in her kitchen may not be the best choices for potential infringers, but perhaps a large commercial food processing or manufacturing company would be. An example of a “good” potential infringer is one that has the financial ability to license your patent, and may even have a willingness to do so. The ability to discover who is infringing should also be a part of your business decision on whether or not to pursue a patent. Spying on grandma’s kitchen activities may not be a worthwhile business undertaking.

Regardless of the challenges of obtaining and potentially enforcing a food related patent, there may be marketing reasons for filing a patent application – the words “patent pending” can temporarily provide value in discouraging potential competitors and create perceived value to potential customers, partners, and investors. Remember, however, that a patent application and any resulting patent will generally become public record. If a slight change in the recipe could circumvent any resulting patent claims, then keeping the recipe a trade secret should also be considered. Trade secrets are fundamentally different than patents, and there are no non-obviousness challenges to deal with. They do not expire like patents, but require a meticulous plan and a series of non-disclosure and other agreements with employees and others – think Coca-Cola®. Trade secret recipes can, however, be reverse engineered or independently discovered by others and put to use without payment of a royalty to the trade secret holder..

The final decision on whether to attempt to patent a recipe or food product often comes down to a business decision. Understanding the many challenges and difficulties in obtaining a patent for a food product or recipe are important to anyone that is planning to make that decision.

1. 35 U.S.C. 101
2. 35 U.S.C. 102 and 103
3. The Limited Monopoly® June 2010
4. The Limited Monopoly® April 2008
5. The Limited Monopoly® May 2008

This month we would like to thank Michael R. Graif, a partner with Curtis, Mallet-Prevost, Colt & Mosle LLP, an international law firm with headquarters in New York City.   Mr. Graif is chair of their intellectual property group, and is a registered patent attorney. He focuses his practice on intellectual property and intellectual property litigation, and teaches social media law at the Benjamin N. Cardozo School of Law at Yeshiva University in New York City as well as at the University of Pennsylvania Law School.

Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers. Copyright 2015 Robert Gunderman, Jr. and John Hammond.

Note: This short article is intended only to provide cursory background information, and is not intended to be legal advice. No client relationship with the authors is in any way established by this article.

GRAPHIC CREDIT: Rohwedder bread slicing machine. The National Museum of American History, Kenneth E. Behring Center. http://americanhistory.si.edu/collections/search/object/nmah_1317263   

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