patenting a new feed/supplement that we are selling already

[alicebrownsville]

Hi Brad and all,
I look forward to working with you all. 
We're a small manufacturer of animal feed and supplements and have a number of products that are unique in the industry.  I've made a number of versions of them, improving as I go.  I am an animal nutritionist and know why these feeds and supplements work but have not shared all that information of course.  It is not all on the label; it is not required to be.  Other companies are trying to copy our products but ours are superior because I have inside knowledge.  I didn't think this could go beyond a trade secret but one of my customers who has several patents of his own tells me I should make them my intellectual property so I can assign the rights to them, or not.  If we are bought out someday that would be nice.  Your thoughts?

[Brad]

Hi,

A few things to consider:   How long have you been selling the product you want to patent?  Under US patent law you have only one (1) year to get your patent filed after your first sale or first public use or public disclosure.  So in your case a patent may not be possible if its been after the one year point.

Also, in general, things like recipes and food supplements that are simply a combination of already known and used food ingredients are generally not patented and instead are protected as trade secrets.  There are a few reasons for this:

(a)  once you file a patent on the idea everyone around the world will be able to read your published patent application online and see exactly what your "secret sauce is" and in what proportions.    So if everyone starts copying you, do you have the ability and resources to keep track of this and test in a lab all of your competitors products to see if they are copying you exactly?  Most companies don't have those resources making a trade secret more attractive.  Remember, patents are not "self enforcing" so it would be up to you to go out and prove people are copying you and take legal action against each party (sometimes costing millions).  https://patentfile.org/you-have-a-patent-so-what/

(b) in general the US Patent Office see combinations of already known and used food ingredients as being an "obvious" type invention and therefore will reject it as being obvious even though you may be the first person to combine those items in this particular way.   The exception to this would be a new type of chemical formulation such as an artificial sweetener etc. as those type of items would be less obvious. 

*This is not legal advice.  I don't know your particular situation or invention.

[alicebrownsville]

So a novel use for existing ingredients to promote better sensory qualities in a chicken egg, for example, made in a way that has not been done before, would be a poor choice?  I don't actually care if Joe down the street copies it, but if a big outfit started selling something like it  (they do monitor our products) it would be a nice piece of IP to license to them or ask them for a settlement.
We have been refining it for a couple of years but it is not yet registered with the state, and I have continued to make changes to it.

[Brad]

You wrote "new use" of doing something which would imply you are trying to protect a "method of use" vs. a "product".  Both are different types of patents you can apply for.   If you are trying to protect a new use or new application than that may be a bit easier to get approved vs. trying to get a patent on just the product or composition itself.

[alicebrownsville]

Yes, "method of use" would make sense.  I've been reading up on the doctrine of inherency and non-obviousness and what is meant by novel, and what it looks like to me is that I have combined several ingredients that separately have their own benefits, but by combining them in the form I use I get a product that solves several problems while conferring benefits that would not be obvious...or maybe part would be obvious and part would not.  For example, a single supplement in a waste-free form that solves these particular problems for the farmer did not exist before I started working on it.  I have the background to recognize the problems and the public's wish for a solution, and I have the technical knowledge to compound the product in a way that will work on several health, esthetic and animal welfare issues, which is not obvious.  I have the technical expertise to make it waste-free and convenient.  If someone with all of my background and training thought up this particular product and put enough time and effort into it, they might be able to make it, but they would first have to conceive of it and figure out a physical way to make it happen.  No one else is likely to be in that position nor have the incentive or interest to do it.
Does it sound to you like I should continue?  I was kind of relieved at first thinking it would not work, because I'm busy and not excited about filling out forms, but maybe I should protect the idea.

[Brad]

That is a tough question to answer.   I think you need to ask yourself "what benefit will I get for spending $1000s of dollars on a patent?"  and if the benefit outweighs the cost than go for it.  If you don't have a good reason to file a patent other than "someone told me I should" its probably not a good investment.   Here is a brief post I wrote on this:

https://patentfile.org/you-have-a-patent-so-what/

[alicebrownsville]

Exactly.  That's why I have always blown it off before.  Other little companies copy our innovative products all the time and I just let it go.  This one, however, could be marketed more easily and widely, and owning the IP might be useful when I hope someday we are bought out by one of the Big Guys.  That's what usually happens to businesses like ours that are successful; they are bought by bigger companies to acquire the brand.  We have a nice brand and are profitable, so I'm trying to position the company for an eventual sale.  That'd be the only reason to get a patent.  These little places that copy us haven't got the technical skill to make good copies nor promote their products widely enough to make a difference.  But the Big Guys could, and if this were to get a nice market presence it would be handy, I think. 
Or not.  That's a lot of paperwork, even though you'd be doing a lot of it.
I'll put the related question in a different post.

[alicebrownsville]

So, the next bit of the question is this:  can the Big Guys, seeing my patent, change a minor bit of its design and patent or use it themselves as an improvement?
Let's say the guy that made the Bionic Wrench sees that now the copy of the wrench he designed that Sears has made in China  under a different name (being fought out in the courts) has a little flashlight embedded into it, illuminating the work area.  Is he now out of luck?  Can the Big Guys add one more herb to my feed supplement, label its use as a support for good vision, and "trump" my product?  (It'd be hard to prove if a chicken has better vision or not, and who cares? )

[Brad]

If your patent is well written and the claims are done by a good attorney or agent than usually someone cannot make a small tweak to get around your patent.   In general simply "adding something" to your claimed invention is not enough to get around your patent and you would still be able to stop someone if they added a new item to your product.