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Introduction

Wonder why your inbox is suddenly full of notifications about Privacy Policy and Terms of Use updates, as well as product enhancements? Well, the General Data Protection Regulation (“GDPR”), which was adopted by the European Parliament over two years ago, is finally taking effect on May 25, 2018. Changes to company policies and practices are only a few ways that organizations around the world are urgently preparing to meet the requirements of the GDPR. So, don’t expect the amount of notifications in your inbox to dwindle any time soon.

GDPR

So, what exactly is the GDPR, you ask? The GDPR is a European data protection law that regulates the collecting, storing, and processing of personal data on EU residents. The GDPR builds on the 1995 European Data Protection Directive, which each EU member state interpreted into its own data protection laws. Those laws will be superseded by the GDPR to allow a consistent standard for data protection across the EU. The GDPR aims to strengthen individuals’ direct control over the usage, retention, and movement of their personal data. In addition to increased privacy for individuals, the GDPR gives regulatory authorities greater power to take action against organizations that breach the new laws.1

To obtain a patent, you must first show that your pumpkin beer recipe qualifies as patentable subject matter. Section 101 provides, in part, that anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.”5 Since pumpkin beer is a mixture of ingredients including water, hops, yeast, barley and pumpkin flavoring and because a pumpkin beer recipe is a list of instructions (i.e., a process) as to how to manipulate, heat, cool and/or mix said ingredients, your pumpkin beer and its recipe constitute a “composition of matter” and “useful process”,6 respectively. Therefore, both qualify as patentable subject matter.7

Next, you must show that your pumpkin beer’s composition and its creation process are novel or that they were not “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” before you submitted your patent application.8 If there is such evidence of use or “prior art” anywhere,9 then your pumpkin beer cannot satisfy Section 102’s novelty requirement. Given that man has been making beer in a variety of ways for over 10,000 years10 and that pumpkin beer, specifically, is widely available for sale and public consumption, the probability that your pumpkin beer is novel is particularly low. Furthermore, given that you are using a store-bought brewing kit, the method/process by which you create your pumpkin beer is also unlikely to be novel. Accordingly, your pumpkin beer will probably fail Section 102’s novelty requirements.

For the sake of example, however, let us assume that the composition of your pumpkin beer is novel. The next step to obtaining a patent is proving that the novel elements of your pumpkin beer would not have been obvious to a person having ordinary skill in the art (“PHOSITA”).11 Accordingly, if a fellow brewer or culinarian were to examine the composition of your pumpkin beer--with the skill and knowledge reasonably expected of her/him-- against the backdrop of all beers, recipes, dishes, etc.12 and she/he concluded that the novel components of your beer were obvious, then your pumpkin beer would fail Section 103. By way of example, the USPTO presumes that items resulting from the scenarios listed below would be obvious to a PHOSITA:

  1. Combining prior art elements according to known methods to yield predictable results;
  2. Simple substitution of one known element for another to obtain predictable results;
  3. Use of known techniques to improve similar devices (methods, or products) in the same way;
  4. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
  5. “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
  6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; and
  7. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

13The parallels between the scenarios above and the culinary world are striking. For example, most chefs likely have a vast knowledge of spices and ingredients, so they should be able to predict the taste of something as a unique and novel as dark chocolate combined with minced garlic (scenario 1). Finding simple ingredient substitutions to yield predictable results is as easy as flipping to the back of most cookbooks (scenario 2); and one need only visit one’s county fair to discover how people are “improving” things like Fruit Loops, Kool-Aid and Oreos through deep-frying (scenarios 3 and 4). Unsurprisingly, courts have been reluctant to uphold patents in the “constantly developing [culinary] art” and have observed that the “addition of, or elimination of, common ingredients” or the tweaking of a “former practice” should not make a creation patentable simply because “no one else ever did [that] particular thing.”14 Notwithstanding the preceding, the Supreme Court has acknowledged that some additional or “secondary” considerations can help “give light to the circumstances surrounding the origin of the subject matter.”15 Over the years, the courts have considered the following secondary considerations as “indicia of nonobviousness”: (1) the invention satisfied a long-felt need; (2) others have failed to solve that need; (3) the commercial success of the invention; and (4) unexpected results.”16 Accordingly, to overcome a rejection for obviousness, you will have to rely on those secondary considerations given your beer’s culinary circumstances.

Beers can vary widely in taste, consistency, color, smell, etc., yet all beers are produced through a fermentation process and with just a few basic ingredients--water, hops, malted cereal grains and yeast. Over the last 10,000 years, brewers have experimented with beer’s components and have developed well known techniques to produce specific outcomes. For example, adjusting the amount of sugar available to yeast during or after fermentation can affect a beer’s alcohol by volume and its carbonation levels. Changes in taste, consistency and color can be controlled by substituting the type of grain or hops; or by adding flavor (hops or other additives such as pumpkin) later in the process. Assuming that you followed the store-bought brewing kit’s instructions to make your beer and that your pumpkin beer is, in fact, beer by definition,17 the USPTO would likely see your beer as a product of the scenarios above and would presume that a PHOSITA would consider the novel elements of your pumpkin beer to be obvious. While you might still be able to establish nonobviousness through secondary considerations, based on your occasional brewing habits and limited distribution at social gatherings, you will be relying solely on a showing that your process or composition for pumpkin beer had unexpected results. However, since your pumpkin beer was brewed with a publicly-available kit and the prior art consists of 10,000 plus years of beer brewing, it is unlikely that a PHOSITA would consider your process or composition to yield unexpected results. Given the likelihood that the USPTO would view your pumpkin beer as the product of disqualifying scenarios and that a PHOSITA would not find anything unexpected, despite its novel composition, your pumpkin beer would probably fail Section 103’s nonobviousness requirement and would, therefore, not be patentable.

OTHER SOURCES OF PROTECTION

Overcoming such steep barriers to obtain patent protection for culinary innovations might seem strange to some. After all, one cannot simply open up a shop and start selling Big Macs and Whoppers, so clearly there must be some sort of protection available to companies like McDonald’s, Burger King and the like. This section will discuss some of the other options that might be available for protecting your pumpkin brew.

Copyright

One of the more prolific forms of intellectual property protection is copyright. Its scope of protection can range from YouTube videos and software licenses to books and artwork,18 and its protective term can literally last lifetimes.19 Unlike patents, copyright is not meant to “preclude others from using the ideas of information revealed by the author’s work.”20 Accordingly, protection does not extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery.”21 Rather, protection subsists “in original works of authorship fixed in any tangible medium of expression.”22 For example, one can prohibit another from printing or publishing his or her book, or any material part thereof, regarding a peculiar system of recordkeeping. However, such right does not extend to the peculiar system of recordkeeping itself. Others are free to practice this peculiar recordkeeping system as well as to describe it in their own books and publications; provided, that, they do not copy the expressive elements of the former.23 Yet, in some cases, the idea conveyed in a work cannot be expressed any other way. In these cases--where the idea and expression have “merged,” no copyright protection is available “lest there be a monopoly on the underlying idea.”24

As discussed above, your pumpkin beer recipe is simply a recitation of ingredients and instructions on how to manipulate them. With regards to recipes, the U.S. Copyright Office has explicitly stated that “[c]opyright law does not protect recipes that are mere listings of ingredients. Nor does it protect other mere listings of ingredients such as those found in formulas, compounds, or prescriptions. Copyright protection may, however, extend to substantial literary expression—a description, explanation, or illustration, for example—that accompanies a recipe or formula or to a combination of recipes, as in a cookbook.”25 Therefore, while you can protect the expressive elements of a cookbook or collection through copyright, you cannot protect the pumpkin beer recipe itself.

Trademarks

From a policy perspective, trademarks differ from patents and copyrights in that they are primarily intended to protect the consuming public rather than to reward inventors and authors. A trademark can be a word, symbol or phrase, or any combination thereof, used, in commerce, to identify and distinguish a person’s goods from others’ goods.26 The Supreme Court has referred to them as “merchandising shortcut[s] which induce[] a purchaser to select what he wants or what he has been led to believe he wants.”27 They “quickly and easily assure[] a potential customer that this item—the item with the mark—is made by the same producer as other similarly marked products.”28 Accordingly, anyone attempting to “poach upon the commercial magnetism”29 of another by using, without consent, trademarks like “McDonald’s”, “Big Mac”, “Burger King” and “Whopper”(or “colorable imitations” thereof), ”in connection with the sale, offering for sale, distribution, or advertising of any goods or services,” and “such use is likely to cause confusion, or to cause mistake, or to deceive,” then that person is liable for trademark infringement.30 Therefore, while you may not be able to exclude or prevent others from making your pumpkin beer, you can prevent others from profiting off your reputation and goodwill by obtaining trademark protection. Moreover, so long as you carefully manage the use of your trademarks commercially (and you pay the requisite maintenance fees), protection can last forever.31

Broadly speaking, there are two inquiries in ascertaining a trademark’s validity: (1) the mark’s distinctiveness; and (2) the likelihood of consumer confusion. Although you can choose to affiliate your company or beer with any name, symbol, phrase, etc. (provided that they are not themselves trademarked), the more distinctive the mark the stronger it will be.32 The courts have identified five categories along a “spectrum of distinctiveness” into which a mark may fall.33 The first three categories--fanciful, arbitrary and suggestive marks--are considered to be “inherently distinctive” and are protectable immediately upon use.

  • Fanciful marks - these are fictional / made-up words that, prior to their adoption, had no meaning. Accordingly, they can serve no other function than to identify and distinguish an owner’s goods and services. Some examples include: Pepsi for beverages, KODAK for film, and Rolex for watches.
  • Arbitrary marks - these are marks that typically do have a dictionary meaning but have been applied to unrelated goods or services. Some examples include: Apple for computers, Omega for watches and Crown Royal for spirits.
  • Suggestive marks - these are marks that hint at the nature, quality or characteristic of the applicable goods or services without actually describing said goods or services. What distinguishes suggestive marks from descriptive marks is that the former requires consumers to do a bit of imaginative thinking. Some examples of suggestive marks include: Microsoft for computer software, Swatch34 for watches and Tail Wagger for dog food.
  • Descriptive marks - these are marks that actually describe the applicable goods or services. Because descriptions are not inherently distinctive (i.e., readily able to identify a specific/particular source), these marks are not eligible for protection until they have “acquired distinctiveness.” Some examples include, Bank of America for banking services that originated in America, General Motors for motor vehicles, and Holiday Inn for lodgings. Each of these examples eventually took on a “secondary meaning” to consumers that meant something beyond location and type of goods/services. Consumers understood them to mean a specific source/entity of goods/services.
  • Generic terms - these are words, phrases, etc. that consumers use generally to define the product or service itself, so they are never capable of identifying and distinguishing a specific good or service. Therefore, they are never eligible for trademark protection. For example, “pencil” cannot be trademarked in connection with writing tools nor can “bottle” in connection with containers.

35 Notwithstanding the above, trademark protection is not always everlasting. Aside from a failure to pay the requisite maintenance fees, even inherently distinctive marks can lose trademark protection. This is particularly problematic for marks used in connection with hugely successful products. When the consuming public begins to use the mark to define the good or service itself, such as “thermos,” “escalator,” or “aspirin,” rather than the source, i.e., Thermos GmbH, Otis Elevator Company and Bayer, respectively, the mark is genericized and loses its trademark protection.

Based on the discussion above, in the event that you begin distributing your pumpkin beer commercially, you can immediately protect your reputation and goodwill by choosing an inherently distinctive mark. Given that the USPTO will not grant the trademark “beer” in connection with beer goods and services nor “pumpkin” for describing the pumpkin flavor as they are generic terms and that such grants would mean that no one else could use them to describe their own beer or pumpkin-flavored beer, you should think of a mark, symbol, phrase, etc. that is fanciful, arbitrary or suggestive.

Trade Secrets

Trade secrets can include formulas, patterns, compilations, programs, devices, methods, techniques, etc. Unlike patents and copyrights, trade secrets are not disclosed to the public. They are valuable to a person/company only to the extent that they remain secret. To maintain their secrecy, companies often limit internal access to a select few employees who are usually required to sign confidentiality agreements. While companies may have a cause of action against someone if a trade secret is illegally misappropriated (e.g., contractual breach or industrial espionage), if the trade secret is inadvertently disclosed outside the company without any confidentiality obligations, the trade secret is no longer secret and the company forfeits any cause of action it might have had. This may be why some companies have gone to extreme measures to protect their trade secrets. For example, Kentucky Fried Chicken keeps the original fried chicken handwritten recipe locked away in a “770-pound safe, encased in two feet of concrete and guarded by video cameras and motion detectors.”36 The formula for Coca-Cola, despite having been around for more than 100 years, is only known to a handful of people. According to Coca-Cola, “only two senior executives know the formula at any given time.”37 Although you are not required to go to such extremes, you do have to take reasonable steps to protect your trade secret. In most cases, this means executing the proper confidentiality agreements and remaining vigilant about who has access to the secret. If you want to take your pumpkin beer to market and you anticipate that you will need help in ramping up production, you should consider implementing steps to maintain the secrecy of your recipe.

CONCLUSION

While your pumpkin beer, its recipe and its manufacture are not automatically barred from patent protection, it is unlikely that your pumpkin beer represents something completely new or nonobvious in the entire history of beer. Either way, you will probably not be able to patent your pumpkin beer. However, should you decide to start selling your beer commercially, you could protect the reputation and goodwill of your brand / company by trademarking a distinctive name or packaging. If there are concerns about the recipe itself, you could also choose to keep its components forever a trade secret. In any case, the next time you’re at a potluck and someone suggests that you patent your culinary concoction, you can simply thank him or her for the (not-so) novel compliment and ask if he or she has any ideas for a name.

FOOTNOTES

  1. As for type of beer, the author is partial to pumpkin ales, but it can be a pumpkin stout or lager if you prefer.
  2. 35 U.S.C § 154(a)(1).
  3. Id.
  4. 35 U.S.C. § 154(a)(2).
  5. 35 U.S.C. § 101.
  6. The “useful” requirement is potentially misleading as it seemingly invites a level of subjectiveness to the assessment, i.e., “useful to whom?” Accordingly, the courts and the USPTO interpret this “utility” requirement very broadly. Any rejections for lack of utility are generally due to an applicant’s failure to state what the invention does or because an applicant has claimed a wholly inoperative invention, e.g., a perpetual motion machine. See Manual of Patent Examining Procedure (hereafter “MPEP”) § 2107 Guidelines for Examination of Applications for Compliance with the Utility Requirement, available at https://www.uspto.gov/web/offices/pac/mpep/s2107.html (last visited October 9, 2017).
  7. In fact, aside from laws of nature, physical phenomena and abstract ideas, § 101 patentable subject matter can “include anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
  8. 35 U.S.C. § 102.
  9. The scope of Section 102’s search for novelty, or the absence of “prior art”, is not limited to the patent applicant’s industry nor to his or her country. One popular example of this (whether true or not) is how a Donald Duck cartoon was purportedly cited as prior art against a UK process patent application for raising a ship from the ocean floor by pumping millions of small, buoyant balls into the ship’s hull.
  10. Ben McFarland, World’s Best Beers 10 (2009).
  11. 35 U.S.C. § 103.
  12. In determining obviousness, one must first: (a) determine the scope and content of the prior art; (b) ascertain the differences between the claimed invention and the prior art; and (c) resolve the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and Graham v. John Deere Co., 383 U.S. 1 (1966).
  13. MPEP § 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness, available at https://www.uspto.gov/web/offices/pac/mpep/s2143.html (last visited October 9, 2017).
  14. Application of Levin, 178 F.2d 945, 948 (C.C.P.A. 1949).
  15. Graham, 383 U.S. at 17-18.
  16. Andrew Blair-Stanek, Increased Market Power as a New Secondary Consideration in Patent Law, 58 AM. U. L. REV. 707, 712-13 (2009).
  17. “An alcoholic beverage usually made from malted cereal grain (such as barley), flavored with hops, and brewed by slow fermentation.” “beer.” Merriam-Webster Online Dictionary. 2017, available at https://www.merriam-webster.com/dictionary/beer (last visited October 9, 2017).
  18. Types of copyrightable works include the following: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works. 17 U.S.C. § 102(a).
  19. In general, a copyright lasts for the “life of the author and 70 years after the author’s death.” 17 U.S.C. § 302.
  20. H.R. Rep. No. 94-1476, at 56-57 (1976).
  21. 17 U.S.C. § 102(b).
  22. 17 U.S.C. § 102(a) (emphasis added).
  23. See Baker v. Selden, 101 U.S. 99, 104 (1879).
  24. Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 765 (9th Cir. 2003) (discussing the “merger doctrine”).
  25. U.S. Copyright Office, Recipes FL-122 (2010), available at https://www.copyright.gov/fls/fl122.pdf (last visited October 9, 2017) (emphasis added).
  26. 15 U.S.C. § 1127.
  27. Mishawaka Rubber Woolen Mfg. Co. v. Kresge Co., 316 U.S. 203, 205 (1942).
  28. Au-Tomotive Gold, Inc. v. Volkswagen of America, 457 F.3d 1062, 1067 (9th Cir., 2006).
  29. Kresge Co., 316 U.S. at 205.
  30. 15 U.S.C. § 1114(1).
  31. Lastowka, Greg, Trademark’s Daemons, 48 Hous. L. Rev. 779, 782 (2011).
  32. For clarity, the strength of a mark refers to its susceptibility to be invalidated and not to an expansion of rights.
  33. See generally Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976).
  34. Swatch, S.A. v. Beehive Wholesale, L.L.C., 888 F.Supp.2d 738, 748 (E.D. Va. 2012) (noting that if read as “S” and “Watch” the mark is suggestive), But see Swatch Watch, S.A. v. Aste Trading Corp., No. 85 Civ. 7726, 1986 WL 734, at *5 (S.D.N.Y. Jan. 3, 1986) (finding “Swatch” to be fanciful).
  35. Abercrombie & Fitch Co., 537 F.2d at 9-12.
  36. Liam Stack, Is This the Top-Secret KFC Recipe?, N.Y. Times, Aug. 25, 2016, available at https://www.nytimes.com/2016/08/26/dining/is-this-the-top-secret-kfc-recipe.html (last visited October 9, 2017).
  37. Ivana Kottasova, Does Formula Mystery Help Keep Coke Afloat?, CNN, Feb. 19, 2014, available at http://edition.cnn.com/2014/02/18/business/coca-cola-secret-formula/index.html (last visited October 9, 2017).