Revised Examination Guidelines allow patenting of food/drink inventions
According to the Examination Guidelines in place before the revision, it used to be considered that the discovery of a new attribute of publicly-known foods provides no new application which is distinguishable from publicly-known foods. Therefore, an invention of foods specifying a use application in a claim is not acknowledged as a use invention. Thus, even if a new attribute of publicly-known foods is discovered, the food cannot be protected by a patent.
Meanwhile, due to recent increasing health consciousness and desire for health enhancement, the health food market has expanded and R&D relating to functionality of foods has been promoted. In the above context, the user’s needs for patent protection have increased. Additionally, there are countries where a use invention of foods is patentable.
Due to the above, the Examination Guidelines regarding a use invention of foods were inspected and revised so as to protect and utilize an invention of foods in related technical fields.
A. Details of revised Examination Guidelines regarding a use invention of foods
The novelty of a use invention of foods is determined first, and subsequently the requirements such as inventive step and description requirements are examined in a manner similar to other fields.
(1) When a claim of an invention of foods specifies a product by use application, it is recognized that the limitation of use application specifies the invention according to the claim.
Cases in which an invention of a product with an expression specifying the product by use application such as “for use in …” (the limitation of use application) in a claim should be interpreted as a use invention:
A use invention is defined as the invention based on
a) discovering an unknown attribute of a product and
b) finding out that the product is suitable for a novel use application because of such an attribute.
(2) When limitation of use application refers to animals or plants, since such limitation of use merely indicates the utility of the animals or plants, the animals or plants are interpreted as animals or plants per se without limitation of use application.
(3) As a test for verification of an effect of a use invention of foods, it is sufficient that, as in other technical fields, the person skilled in the art can understand from the description in the specification and common technical knowledge that the foods can be used in the application.
B. Example 1
Claim 1: A food composition for use in preventing a hangover containing an ingredient A as an active ingredient.
The cited invention: A food composition containing ingredient A.
Even if the above food compositions have no difference except the limitation of use application such as “for use in preventing a hangover”, the examiner acknowledges the claimed invention including the limitation of use application provided that both of the following conditions (a) and (b) are satisfied. Accordingly, the above inventions are recognized as different inventions = a novel invention.
a) “The use in preventing a hangover” is derived from discovery of an unknown attribute that promotes alcohol metabolism by an ingredient A.
b) The use application which is derived from the attribute is different from conventionally known applications of “food composition containing an ingredient A” and is novel.
C. Example 2
Claim 1: A food composition for preventing periodontal disease comprising ingredient A as an active ingredient.
Claim 2: Grapefruit juice for preventing periodontal disease comprising ingredient A as an active ingredient.
Claim 3: Grapefruit for preventing periodontal disease comprising ingredient A as an active ingredient.
Examples: The examples describe that ingredient A was isolated from grapefruits and that an antibacterial effect was confirmed.
Citation: The Citation describes that ingredient A was isolated from grapefruits as an ingredient for lowering LDL cholesterol in the blood and that LDL cholesterol was lowered by taking a supplement containing ingredient A or juice containing ingredient A produced by squeezing grapefruits.
The inventions according to Claims 1 and 2 differ from the cited invention in the presence of the limitation of use application such as “for preventing periodontal disease” and thus have novelty. If the citation does not suggest the feature wherein the ingredient A has an effect of preventing periodontal disease, inventive step is also acknowledged.
Meanwhile, in the invention according to Claim 3, the limitation of use application such as preventing periodontal disease merely indicates the utility of plants, i.e. grapefruits. Therefore, it is recognized that the invention according to Claim 3 is a grapefruit without limitation of use application. Since the citation describes a grapefruit containing ingredient A, the invention according to Claim 3 has no novelty.
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