• Login
    • Join
  • FOLLOW:
  • Subscribe Free
    • Magazine
    • eNewsletter
    Checkout
    • Magazine
    • News
    • Exclusives
    • Nutraceuticals
    • Markets
    • Health
    • Blogs
    • Jobs
    • Events
    • Buyers' Guide
    • Showcases
    • More
  • Magazine
  • News
  • Exclusives
  • Nutraceuticals
  • Markets
  • Health
  • Blogs
  • Jobs
  • Events
  • Buyers' Guide
  • Showcases
  • Current & Past Issues
    Features
    Columns
    Editorials
    Digital Edition
    Subscribe Now
    Advertise Now
    eNewsletter
    Editorial Guidelines
    Top Features
    Healthy Snacking: Matching Lifestyle with Nutrition

    Vitamins & Minerals: Traditions in Preventive Health

    Fiber Revisited: Closing the Gap

    Green Power for Future Generations

    2019 International Buyers' Guide
    Blogs & Guest Articles
    Breaking News
    Certifications, Approvals and Patents
    Exclusives
    Industry & Market News
    People
    Products
    Regulatory
    Research
    Supplier News
    Live From Shows
    Top News
    Study Shows Collagen Peptides Aid Runners in Injury Recovery

    Jim Emme to Receive American Botanical Council Champion Award for 2018

    GOED Releases Updated Omega-3 Ingredient Market Report

    Afrigetics Botanicals Sponsors Bulbine through ABC’s Adopt-an-Herb Program

    Four International Associations Join Food Supplements Europe
    Antioxidants
    Dairy-Based Ingredients
    Enzymes
    Fatty Acids
    Fiber & Carbohydrates
    Green Foods
    Herbs & Botanicals
    Marine Nutraceuticals
    Minerals
    Omega 3s
    Probiotics & Prebiotics
    Proteins, Peptides, Amino Acids
    Sweeteners
    Vitamins

    Study Shows Collagen Peptides Aid Runners in Injury Recovery

    Podcast: Talking Hemp & CBD 101 with AHPA’s Jane Wilson

    Jim Emme to Receive American Botanical Council Champion Award for 2018

    GOED Releases Updated Omega-3 Ingredient Market Report

    Afrigetics Botanicals Sponsors Bulbine through ABC’s Adopt-an-Herb Program
    Consumer Trends
    Contract Manufacturing
    Cosmeceuticals / Nutricosmetics
    Delivery & Dosage Technologies
    Dietary Supplements
    Flavors & Colors
    Functional Foods & Beverages
    Healthcare Trends
    Medical Nutrition
    Mergers & Acquisitions
    Natural/Organic
    Nutrition Bars
    Packaging
    Pet Nutraceuticals
    Quality & Safety
    Regulations
    Research
    Testing
    World Markets

    Study Shows Collagen Peptides Aid Runners in Injury Recovery

    Podcast: Talking Hemp & CBD 101 with AHPA’s Jane Wilson

    Afrigetics Botanicals Sponsors Bulbine through ABC’s Adopt-an-Herb Program

    Four International Associations Join Food Supplements Europe

    Research on Stratum Eggshell Membrane Explores Benefits for Cartilage Protection
    Bone & Joint Health
    Cancer Risk
    Cardiovascular Health
    Cognitive Function
    Diabetes & Blood Sugar Management
    Digestive Health
    Energy
    Eye Health
    Healthy Aging
    Immune Function
    Infant & Children's Health
    Inflammation
    Men's Health
    Mood Health & Sleep
    Oral Health
    Sexual & Reproductive Health
    Skin Health
    Sports Nutrition
    Weight Management/Weight Loss
    Women's Health

    Study Shows Collagen Peptides Aid Runners in Injury Recovery

    Podcast: Talking Hemp & CBD 101 with AHPA’s Jane Wilson

    Afrigetics Botanicals Sponsors Bulbine through ABC’s Adopt-an-Herb Program

    Research on Stratum Eggshell Membrane Explores Benefits for Cartilage Protection

    New Monograph on Centella asiatica Looks to Expand Use and Applications
    Industry Events
    Live From Show Events
    Webinars
    All Companies
    Categories
    Trade Associations
    Company Capabilities
    International Buyers Guide Companies
    Herbally Yours

    PLT Health Solutions

    Watson Inc.

    Barrington Nutritionals

    BatchMaster Software, Inc.
    Companies
    Product Releases
    News Releases
    Literature / Brochures
    White Papers
    Jobs
    VIdeos
    Services
    Add New Company
    International Buyers Guide Companies
    Barrington Nutritionals

    Shanghai Freemen

    PLT Health Solutions

    Watson Inc.

    Sabinsa Corporation
    • Magazine
      • Current / Back Issue
      • Features
      • Editorial
      • Columns
      • Digital Edition
      • eNewsletter Archive
      • Editorial Guidelines
      • Subscribe Now
      • Advertise Now
    • Breaking News
    • Buyers' Guide
      • All Companies
      • Categories
      • Trade Associations
      • Company Capabilities
    • Nutraceuticals
      • Antioxidants
      • Dairy-Based Ingredients
      • Enzymes
      • Fatty Acids
      • Fiber & Carbohydrates
      • Green Foods
      • Herbs & Botanicals
      • Marine Nutraceuticals
      • Minerals
      • Omega 3s
      • Probiotics & Prebiotics
      • Proteins, Peptides, Amino Acids
      • Sweeteners
      • Vitamins
    • Markets
      • Consumer Trends
      • Contract Manufacturing
      • Cosmeceuticals / Nutricosmetics
      • Delivery & Dosage Technologies
      • Dietary Supplements
      • Flavors & Colors
      • Functional Foods & Beverages
      • Healthcare Trends
      • Medical Nutrition
      • Mergers & Acquisitions
      • Natural/Organic
      • Nutrition Bars
      • Packaging
      • Pet Nutraceuticals
      • Quality & Safety
      • Regulations
      • Research
      • Testing
      • World Markets
    • Health
      • Bone & Joint Health
      • Cancer Risk
      • Cardiovascular Health
      • Cognitive Function
      • Diabetes & Blood Sugar Management
      • Digestive Health
      • Energy
      • Eye Health
      • Healthy Aging
      • Immune Function
      • Infant & Children's Health
      • Inflammation
      • Men's Health
      • Mood Health & Sleep
      • Oral Health
      • Sexual & Reproductive Health
      • Skin Health
      • Sports Nutrition
      • Weight Management/Weight Loss
      • Women's Health
    • Online Exclusives
    • Webinars
    • Slideshows
    • Blogs & Guest Articles
    • Health E-Insights
    • Videos
    • Podcasts
    • Infographics
    • Whitepapers
    • Research
      • TrendSense
      • Monograph Center
      • White Papers
      • Research News
    • Jobs
    • Events
      • Industry Events
      • Live From Show Events
      • Webinars
    • Supplier Showcases
      • Companies
      • Product Releases
      • News Releases
      • Literature / Brochures
      • White Papers
      • Jobs
      • VIdeos
      • Services
    • About Us
      • About Us
      • Contact Us
      • Advertise With Us
      • Privacy Policy
      • Terms of Use
    Features

    Best Practices For Developing Patent Strategies

    Procurement, enforcement and risk management will help protect your products and innovations.

    Best Practices For Developing Patent Strategies
    Best Practices For Developing Patent Strategies
    Related CONTENT
    • Certified Nutraceuticals Files Patent Application for Revers♥e-vine
    • Patent Litigation By Non-Practicing Entities Rising
    • Saira Alikhan Joins Amin Talati, LLC
    • Maximizing Your IP Portfolio
    • Amin Talati Welcomes New Partner
    Rakesh M. Amin, LLM, RPh & Brent A. Batzer, Amin Talati10.01.14
    Intellectual property, and patents in particular, is a significant part of any nutraceutical business today. Whether they are your patents or those owned by others, having an established strategy to develop and exploit your own intellectual property while minimizing your risks with respect to others’ patents is a valuable piece of your business strategy.

    A basic patent strategy has three primary areas of focus: patent procurement (i.e., obtaining patent rights), patent enforcement and risk management. Each is important to protect your company and can be done with varying levels of expense.  Be aware that spending some money now can net you significant money later, whether through value added or money saved in avoiding costly litigation.

    Back to Basics
    The first and best place to look for potential patentable material is within the company. To audit your home-grown intellectual property, an understanding of some patent law basics is helpful. In order to be patentable, an invention must be new, useful and non-obvious in light of what existed before it, which includes all patents, published patent applications and non-patent publications worldwide.

    Furthermore, the invention must fall within the “patentable subject matter” as required by statute. The meaning of the statute has been the subject of recent attention from the courts and U.S. Patent and Trademark Office, with particular importance for the natural products industry. One constant has been the continued patentability of specific methods of uses of natural products. Thus, if you have inventions involving natural products, such as plant extracts, you will want to consult with a patent attorney in order to determine whether you may have patentable subject matter under the current state of the law, and your options going forward.

    Your internal review should include a basic recording system that will allow you to review any potential inventions as they are developed for possible patentable subject matter. One such way of collecting the relevant information is by using a record of invention form. This puts the information into one place for the reviewer, and also will save time with your patent attorney if you decide to pursue a patent application. Your patent attorney can provide you with a form and help you set up a plan to harvest the inventions from your R&D operations. Due to recent changes in the law, time is of the essence in filing for protection, as the first inventor to file a patent application has priority to get the patent on the invention, even when another may have invented the same invention first. Making a record of invention part of your standard process helps under this “first-to-file” regime by speeding up your internal fact-gathering.

    As part of your patenting strategy, you should also consider protection internationally. Patents in many other countries can be applied for using your U.S. patent application as the starting point, including the priority date. Each country will typically have occasional or even yearly fees in order to maintain the patent as active, and these fees can add up quickly. Your international strategy should focus on specific countries that are important markets for your company in order to get the best “bang for your buck” on your foreign patent holdings.

    Patent rights can also be purchased from others. One common way of obtaining rights is through a license. Patent licenses can be mutually beneficial; a patentee may not be able to commercialize an invention due to lack of funds or other barriers to entry, while a licensee can obtain rights (particularly in an exclusive license) that give it an advantage in the marketplace. Patents can also be purchased outright, whether at a patent auction or bankruptcy asset sale, or purchased directly from an owner willing to sell. Joint ventures may also generate patentable inventions, or be based on the patents already owned by one party with the goal of improvement in some way, with the improvements owned by both parties.

    Enforce & Protect
    The second piece of a patent strategy is enforcing your rights under the patents. Patents grant the owner the right to exclude others from using the invention, as defined by the claims of the patent. Enforcement is typically accomplished in one of two ways: a cease-and-desist letter or other communications with the potential infringer, and litigation in the courts.

    Of course, in order to enforce you must first determine who might be infringing your patent. Pay close attention to your competitors in the market, and if you notice a possible infringer, contact your patent litigation counsel as soon as possible in order to weigh the two primary options. The cease-and-desist letter is commonly the first step. A cease-and-desist letter informs an infringer of your patent rights and requests that they cease the infringing activity. One must take care to have performed an adequate investigation into the infringement prior to sending such a letter. A letter sent with little investigation or in bad faith can expose the sender to claims such as unfair competition. A poorly timed cease-and-desist letter may also permit the infringer to strike first and file a declaratory judgment lawsuit in a location inconvenient and more costly for you. In some situations, you may determine it prudent to proceed directly to litigation without any sort of dialogue with the opposing party in advance.

    The third piece of patent strategy is protecting your company from infringement suits. One method of determining whether your competitors have patents covering their products is to look at their packaging. A patent owner may mark products with the patent numbers. Note that such marking is not required, but is generally considered a best practice because it can greatly increase the amount of damages to which they are entitled. Once you have determined the patents that your competitor asserts cover its product, you and your patent counsel can compare the claims of those patents to your products.

    Another way to try to avoid claims against you proactively is to have a freedom-to-operate search performed for your product, particularly when you introduce a product or reformulate an existing one. This search can help determine if there are patents of others that cover your product and allow you to “design around” the patent if possible. Having the search performed and an opinion of counsel at an early stage gives you the best chance to design around without having already launched a product. Keep in mind that no search or opinion can guarantee your company will not be sued by a patent holder. However, it can affect the damage award and should reduce the chances of such lawsuits against you.

    Lastly, you may also consider the possibility of commencing a reexamination or post-grant review of your competitor’s patent. Reexaminations and post-grant reviews are proceedings at the Patent Office based on prior art that was not considered by the examiner, or based on an argument that the examiner missed in art that was cited. Each form of review that is available carries its own advantages and disadvantages. For example, an ex parte reexamination is less expensive than an inter partes review, but the ex parte reexamination allows you much less participation in the process than an inter partes review. If specific patents appear to be a threat to your business, consider discussing these options with your patent attorney to see if this sort of  “preemptive strike” might make sense for your business.

    In implementing the entire strategy, you may notice information found in one aspect can lead to an opportunity in another. For example, you may have a freedom-to-operate search performed and discover that a patent is owned but does not appear to be used by the owner. This may present an opportunity for purchase or a license. Likewise, vigilance in monitoring for infringers of your own patents may reveal opportunities to work together with another company, or spark an innovation of your own that may be patentable. The patent strategy works as a unified whole to help maximize your ability to protect and monetize your products and innovations.   


    Rakesh M. Amin, LLM, RPh is a partner at Amin Talati. He advises clients on intellectual property matters, as well as FDA, FTC, U.S. Customs, USDA and related regulatory and litigation matters. Brent A. Batzer is an associate with the intellectual property practice at Amin Talati. He is a registered patent attorney and advises clients on patents, trade secrets and other forms of intellectual property, as well as IP-related transactional matters and litigation.
    Related Searches
    • Nutraceutical
    • Extracts
    • Natural
    • Regulatory
    Related Knowledge Center
    • Healthcare Trends
    • Regulations
    Suggested For You
    An Introduction to LJ100® An Introduction to LJ100®
    Activ’inside Debuts EXPRESS H2O Extracts Activ’inside Debuts EXPRESS H2O Extracts
    Trademarks and Social Media: What Nutraceutical Marketers Need to Know Trademarks and Social Media: What Nutraceutical Marketers Need to Know
    HP Ingredients Appoints AIDP as Licensed Distributor for LJ100 Tongkat Ali Extract HP Ingredients Appoints AIDP as Licensed Distributor for LJ100 Tongkat Ali Extract
    Court Orders Olive Lifesciences to Pay Sabinsa $2.2 Million Court Orders Olive Lifesciences to Pay Sabinsa $2.2 Million
    Certified Nutraceuticals Files for Patent for KollaJell Hydrolyzed Jellyfish Collagen Certified Nutraceuticals Files for Patent for KollaJell Hydrolyzed Jellyfish Collagen
    Kemin Awarded U.S. Patent for FloraGLO Lutein and ZeaONE Zeaxanthin Kemin Awarded U.S. Patent for FloraGLO Lutein and ZeaONE Zeaxanthin
    Joseph E. Cwik Joins Amin Talati & Upadhye Joseph E. Cwik Joins Amin Talati & Upadhye
    Kyowa Hakko Receives Patent for Amino Acid Combination Kyowa Hakko Receives Patent for Amino Acid Combination
    Amin Talati Welcomes New Partner Amin Talati Welcomes New Partner
    Maximizing Your IP Portfolio Maximizing Your IP Portfolio
    Saira Alikhan Joins Amin Talati, LLC Saira Alikhan Joins Amin Talati, LLC
    Patent Litigation By Non-Practicing Entities Rising Patent Litigation By Non-Practicing Entities Rising
    Certified Nutraceuticals Files Patent Application for Revers♥e-vine Certified Nutraceuticals Files Patent Application for Revers♥e-vine

    Related Features

    • Delivery & Dosage Technologies | Dietary Supplements | Digestive Health | Fiber & Carbohydrates | Functional Foods & Beverages | Herbs & Botanicals | Probiotics & Prebiotics | Regulations | Sweeteners | Weight Management/Weight Loss
      Fiber Revisited: Closing the Gap

      Fiber Revisited: Closing the Gap

      Since FDA’s redefinition of fiber, innovation in healthy and natural foods, supplements, and beverages is ready for a renaissance.
      By Lisa Schofield, Contributing Writer 01.03.19

    • Consumer Trends | Green Foods | Healthcare Trends | Herbs & Botanicals | Proteins, Peptides, Amino Acids | World Markets
      Green Power for Future Generations

      Green Power for Future Generations

      Soy offers one sustainable tool to feeding growing global demand for protein.
      By Mikkel Thrane, PhD, Global Sustainability Leader, DuPont Nutrition & Health 01.03.19

    • Herbs & Botanicals | Men's Health | Probiotics & Prebiotics | Quality & Safety | Regulations | Sexual & Reproductive Health | Sports Nutrition | Testing | Weight Management/Weight Loss
      Examining Testing & Certification for Dietary Supplements

      Examining Testing & Certification for Dietary Supplements

      Industry experts discuss the complexities and challenges of testing and third-party certification.
      By Lisa Olivo, Associate Editor 12.06.18


    • Dietary Supplements | Healthcare Trends | Medical Nutrition | Mergers & Acquisitions | Natural/Organic | Regulations | World Markets
      Potential for Natural Health Products in Canada Shifting into High Gear

      Potential for Natural Health Products in Canada Shifting into High Gear

      Demand for natural, clean label, healthy products has taken hold in Canada. Investment resources are keeping pace.
      By Shelley King, MSc, MBA, CEO, Natural Products Canada 12.06.18

    • Healthcare Trends | Herbs & Botanicals | Quality & Safety | Research
      Dr. Muhammed Majeed: A Modern View of Traditional Medicine

      Dr. Muhammed Majeed: A Modern View of Traditional Medicine

      Ayurveda has arrived, and Dr. Majeed is a key reason why.
      By Sean Moloughney, Editor 10.01.18

    • Healthcare Trends | Herbs & Botanicals | Regulations | World Markets
      The Science of Cannabis & Cannabinoids

      The Science of Cannabis & Cannabinoids

      Demand for Cannabis-based products is reaching fever-pitch.
      By Dilip Ghosh, PhD, FACN, nutriConnect 09.10.18


    • Antioxidants | Cosmeceuticals / Nutricosmetics | Men's Health | Natural/Organic | Quality & Safety | Regulations | Research | Skin Health | Women's Health
      MarketWatch 2018

      MarketWatch 2018

      Roundup of news in the world of beauty, inside and out.
      09.04.18

    • Delivery & Dosage Technologies | Quality & Safety | Regulations | Skin Health
      Foundations for Formulating Skin Care Products

      Foundations for Formulating Skin Care Products

      Developing targeted solutions for skin health requires some basic knowledge of formulary and regulatory standards.
      By Dr. Krystal Crawford, ND, MS, RH 09.04.18

    • Herbs & Botanicals | Inflammation | Mood Health & Sleep | Natural/Organic | Quality & Safety | Regulations | Sexual & Reproductive Health | Sports Nutrition | Testing
      Elevating the Herbal Supplement Marketplace

      Elevating the Herbal Supplement Marketplace

      Category scrutiny has led to new opportunities for herbal products.
      By Lisa Olivo, Associate Editor 07.02.18


    • Consumer Trends | Dietary Supplements | Healthcare Trends | Quality & Safety | Testing
      Marketing Advantages for Branded Ingredients

      Marketing Advantages for Branded Ingredients

      Backed by research and intellectual property, branded ingredients can help establish trust and credibility.
      By Suzanne Shelton, The Shelton Group 07.02.18

    • Dietary Supplements | Quality & Safety | Regulations
      The Little OWL That Could … and Can!

      The Little OWL That Could … and Can!

      The Supplement OWL (Online Wellness Library) is a product registry, and an industry-wide, self-regulatory initiative.
      By Gisele Atkinson, Vice President, Quality & Technical Affairs, Council for Responsible Nutrition 01.05.18

    • Cardiovascular Health | Consumer Trends | Diabetes & Blood Sugar Management | Healthcare Trends | Sweeteners
      Hitting the Sweet Spot

      Hitting the Sweet Spot

      As more consumers try to reduce sugar intake, reformulation efforts are ramping up.
      By Lisa Schofield, Contributing Writer 01.05.18

    • Antioxidants | Cardiovascular Health | Consumer Trends | Delivery & Dosage Technologies | Dietary Supplements | Healthcare Trends | Infant & Children's Health | Minerals | Vitamins | Women's Health
      Reliability Reigns for Vitamin & Mineral Supplements

      Reliability Reigns for Vitamin & Mineral Supplements

      Consumers take and trust products to achieve their health and wellness goals, and to fill nutrient gaps in their diet.
      By Sean Moloughney, Editor 01.05.18

    • Consumer Trends | Dietary Supplements | Functional Foods & Beverages | Healthcare Trends | Quality & Safety | Regulations
      State of the Industry: What Lies Ahead?

      State of the Industry: What Lies Ahead?

      Industry experts share their perspective on the nutraceuticals marketplace.
      12.04.17

    • Antioxidants | Cognitive Function | Consumer Trends | Dietary Supplements | Fatty Acids | Healthcare Trends | Healthy Aging | Herbs & Botanicals | Inflammation | Marine Nutraceuticals | Minerals | Omega-3s | Proteins, Peptides, Amino Acids | Regulations | Research | Sports Nutrition | Vitamins
      Buying Into Brain Health

      Buying Into Brain Health

      Aging consumers are searching for reliable products proven by science.
      By Lisa Olivo, Associate Editor 12.04.17

    Breaking News
    • PepsiCo to Acquire CytoSport from Hormel Foods
    • Study Shows Collagen Peptides Aid Runners in Injury Recovery
    • Glanbia Nutritionals to Acquire Watson
    • Alkemist Labs Cuts Testing Turnaround Time by 20%
    • Jim Emme to Receive American Botanical Council Champion Award for 2018
    View Breaking News >
    CURRENT ISSUE

    Jan/Feb 2019

    • Healthy Snacking: Matching Lifestyle with Nutrition
    • Vitamins & Minerals: Traditions in Preventive Health
    • Fiber Revisited: Closing the Gap
    • Green Power for Future Generations
    • View More >

    Cookies help us to provide you with an excellent service. By using our website, you declare yourself in agreement with our use of cookies.
    You can obtain detailed information about the use of cookies on our website by clicking on "More information”.

    • privacy policy
    • term and condition
    • about us
    • contact us

    follow us

    Subscribe

    magazines

    Image
    Image
    Image
    Image
    Image
    Image
    Image
    Image
    Image
    Image
    Image

    Copyright © 2019 Rodman Media. All rights reserved. Use of this constitutes acceptance of our privacy policy The material on this site may not be reproduced, distributed, transmitted, or otherwise used, except with the prior written permission of Rodman Media.

    AD BLOCKER DETECTED

    Our website is made possible by displaying online advertisements to our visitors.
    Please consider supporting us by disabling your ad blocker.


    FREE SUBSCRIPTION Already a subscriber? Login