Imagine That IP Law Blog

This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:

• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their ideas.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that functions as a source identifier. This is generally what the Sharks are referring to when they discuss “branding.”
• A copyright protects a work of authorship (e.g., writing, sculpture, artwork, software). This is not often discussed on the show, but is a strong form of protection for certain works.

In this episode, one new product– which may not be for every palate– raised interesting intellectual property issues.

PITCH: Chirps
Chirps Chips are snack chips made with cricket flour. Chirps Chips take advantage of the fact that insects are a sustainable protein source. Chirps Chips come in the usual snack chip varieties (BBQ, sea salt, cheddar, extra cricket (not a real thing)). I did seek out and try some of the sea salt variety, and they were as good as any other snack chip, with the benefit of a high protein, low fat snack.

From an intellectual property standpoint, protecting a food recipe raises some fascinating issues.

The Patent Act, Section 101, states that patents may be granted for any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” A food recipe can be protected by a patent, much like any other “formulation,” since a recipe is, at the end of the day, a list of ingredients in certain proportions.

However, recall from earlier articles in this series reviewing the SUNSCREENR™ (Swimming with Shark Tank article, Season 8, Episode 6) and LINE CUTTERZ® (Swimming With Shark Tank article, Season 8, Episode 9) pitches, that for an invention to be patentable, it must meet the tests for “novelty” and “non-obviousness.” Combining known ingredients and simply adjusting the amounts or the ingredients, or the order in which ingredients are added, it likely not enough to make a recipe patentable.

However, a specific new combination of ingredients, or how a certain combination of ingredients is processed, can be patentable. Some examples are: U.S. Patent No. 5,503,863 (“Non-fat foods and methods for preparing same”), for a fruit spread or filling; U.S. Patent No. 9,532,588 (“Molded food product”), a molded food product including at least one type of a legume butter or nut butter or seed butter, at least one thickening agent, and a plant-derived wax; and U.S. Patent No. 9,480,276 (“Dry food product containing live probiotic”), a probiotic delivery system that can be consumed as a snack-food or added to a food product.

In particular, a search of the United States Patent and Trademark Office records disclosed U.S. Patent No. 7,291,354, “Product and process of forming a food product.” The claims of that patent are directed to a method of forming a “puffed” food product, including a fluidized protein “chosen from the group consisting of fluidized fly, fluidized cricket, fluidized mealworm, fluidized wax moth, fluidized silk worm, fluidized termite, fluidized wasp, and fluidized ant.” I can only hope this article is not making people too hungry.

While it is therefore possible to protect a food recipe by way of a patent, keep in mind that a patent provides for a limited monopoly. After 20 years from the filing date, anyone can use the recipe disclosed in the patent.

Many companies, therefore, rely instead on trade secrets to protect proprietary food recipes, formulations or processes. A trade secret “means information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” (Uniform Trade Secrets Act).

The most famous example that comes to mind in the food industry is the recipe for Coca Cola. Many food companies keep their recipes and processes as closely guarded secrets, protecting those secrets with confidentiality agreements, and limiting the people who are exposed to all or part of the formulation or process.

Like the name says, the most important thing about a trade secret is that it is kept a secret. Once a secret becomes public, or if it can be derived (such as by reverse engineering) by the final commercial product, trade secret protection is lost.

Finally, if you put some Chirps Chips out in snack bowls at your next social gathering, there is no law that I am aware of that states you must tell your guests that they are eating crickets.

That wraps up Episode 14 of this season of “Shark Tank.” Check this post next week when we see who swims with the Sharks, and who sinks.

Reprinted with permission from the January 27, 2017 issue of The Legal Intelligencer ©2017 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.