AS07-2021 Advanced lecture series on food

technology
IP Commercialisation

Danny Keenan VP Patents – Foods & Refreshment - Unilever 21 October 2021

Outline

▪ My Background

▪ The Importance of Innovation to the Food Industry

▪ Protecting Differentiating Technologies through Patents

▪ Other Forms of Protection

▪ The Role of IP in Enabling Collaboration

▪ Take-Home Messages

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My Background

▪ PhD in Biopolymer Physical Chemistry

▪ 7 years as scientist and technical project leader

▪ … and inventor!

▪ Joined patent profession in 2003

▪ Currently Lead Patent Counsel for Unilever’s F&R Division

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Innovation in the Food Industry

▪ Innovation and IP at the heart of the industry for many years …

1871 -> Jurgens family acquire the patent for making

margarine from its inventor Mège Mouriès. The new
product, made from animal fat, could be mass produced
as an affordable substitute for butter and became
known as margarine.

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Innovation has never been more important …

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 Industry stepping up to the plate …

www.emwllp.com

https://www.fooddive.com/news/mondelez-patents-process-to-lower-the- https://www.intellectualpropertymagazine.com/patent/waste-
amount-of-sugar-in-chocolate/570349/ plastic-to-fuel-conversion-135191.htm

https://www.foodserviceequipmentjournal.com/patent-highlights-drive-for-food-waste-innovation/

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Protecting Differentiating Technology

▪ Innovation is expensive

… but copying is increasingly easy.

▪ The patent system provides a mechanism for incentivizing investment

in innovation:

− 20 year monopoly
− Full disclosure
− Novel
− Inventive

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Examples

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Examples

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 Other forms of protection

▪ Technical innovations can also be protected as Trade Secrets TRIPS — Trade-Related

Aspects of Intellectual Property
Rights
Article 39

2. Natural and legal persons shall have the possibility of preventing

information lawfully within their control from being disclosed to, acquired
by, or used by others without their consent in a manner contrary to honest
commercial practices so long as such information:

(a) is secret in the sense that it is not, as a body or in the precise

configuration and assembly of its components, generally known among or
readily accessible to persons within the circles that normally deal with the
kind of information in question;

(b) has commercial value because it is secret; and

(c) has been subject to reasonable steps under the circumstances, by the
person lawfully in control of the information, to keep it secret.
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Trade Secret vs Patent
Trade secrets Patents

Do not expire (unless published) 20 yrs

Lost when others publish it Once published it is prior art for others

Do not teach the competition Teaches others your technology

No rights against independent development - First to file has the exclusive right
Later 3rd party patent may block freedom of
use (limited prior user rights)

Costs and bureaucracy to keep secret Filing, prosecution and maintenance costs
(reasonable steps)

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Trade Secret vs Patent

▪ Key questions:

− Is the subject matter patentable?

− Can infringement be detected?

− Could the secret be reverse-engineered from the product?

− Can reasonable steps be implemented?

− Are others actively patenting in the field?

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The Role of IP in Collaboration

▪ Simplified Value Chain

Process for Process for

New use of Marketing/sale
New ingredient isolating/making manufacturing New product
product of product
ingredient product

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The Role of IP in Collaboration

Process for Process for

New use of Marketing/sale
New ingredient isolating/making manufacturing New product
product of product
ingredient product

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The Role of IP in Collaboration

Also likely to be trade secrets.

Process for Process for

New use of Marketing/sale
New ingredient isolating/making manufacturing New product
product of product
ingredient product

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 The Role of IP in Collaboration

Also likely to be trade secrets.

cess for Process for

New use of Marketing/sale
ng/making manufacturing New product
product of product
gredient product

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 The Role of IP in Collaboration

New use of Marketing/sale

ng New product
product of product

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 The Role of IP in Collaboration

New use of Marketing/sale

New product
product of product

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 The Role of IP in Collaboration

Also likely to be trade secrets.

New use of Marketing/sale

product of product

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 The Role of IP in Collaboration

If we think we can do it alone …​

then we are not thinking big enough

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 The Role of IP in Collaboration

▪ Simplified Ecosystem Value Chain

Consumer
Goods Company
Consumer
New use of
Goods Company product
New ingredient
Ingredient Retailer
Supplier
Consumer
University Process for
isolating/making New product Goods Company Marketing/sale
of product
ingredient
Start-up
Process for
manufacturing
product

Toll
Manufacturer

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The Role of IP in Collaboration

▪ Each company has its own position on the value chain and its
business case may live or die depending on exclusivity/ freedom to
use.

▪ Example:

- If no exclusivity on ingredient then Ingredient Supplier free

to make ingredient without reference to start-up

- If there is exclusivity then Ingredient Supplier needs a

license to be free to manufacture the Ingredient

▪ IP is the currency of collaboration

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The Role of IP in Collaboration

▪ Each company should secure IP before collaboration if possible.

▪ A successful partnership requires good understanding of each

company’s position on the value chain and what it needs to achieve its
business case.

▪ IP arrangements in the collaboration agreement provide the

mechanism for value sharing through, for example:

− Split ownership (e.g. Start Up owns IP on ingredient, Ingredient

Supplier owns IP on process of manufacture)
− Licensing (may make sense for one Party to own the IP and
arrange for access/exclusivity through licensing).

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Take-home messages

Innovation is more important than ever in the Food Industry

Patents and other forms of IP can be used to protect

investment in new technologies

Innovation ecosystems will be key to solving the important

challenges at speed

IP facilitates partnerships

Successful IP arrangements require understanding of what

each partner needs to succeed

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