For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Friday, 23 October 2009

Charity chips and dodgy patent claims

The IPKat wrote a while ago (here, and updated here) about what turned out to be already a very old story relating to a patent application apparently made by the charity ActionAid UK. Thanks to an anonymous commenter, the application itself was revealed to be GB0203202.7, which published in 2003 as GB2384968. According to the UK patent register, the application terminated before grant. Intrigued to find out more, the IPKat filed a request for a copy of the file (at his own expense, he hastens to add) so he could see what happened to the claims, which as-published read as follows:

1. A fat-absorbent, soggy potato chip imbued with the flavour of salt.

2. An edible potato product, a chip, fashioned from a peeled and sliced raw potato tuber that is soaked (defused imbibition) in a sodium chloride salt solution (concentration up to 30 per cent by weight), drained; dried; deep fried in triglyceride oil at a specified temperature for a specified period of time; removed from the frying medium and allowed to drain for a specified period of time; re-introduced to the triglyceride oil at a specified temperature for a second specified period of time, drained and served.

3. A potato chip as claimed in Claim 2, wherein the potato slices are soaked in a salt solution for five minutes to imbue the chips with the salt flavour.

4. The slices are drained of excess water and allowed to air dry.

5. A potato chip as claimed in Claim 2 or Claim 3, wherein the freshly washed, drained and dried raw peeled potato slices are immersed for a period of three minutes in a triglyceride vegetable oil, such as that derived from the corn or sunflower plant, which is maintained at a temperature of 170-180 degrees C.

6. A potato chip as claimed in Claim 3 or Claim 4, wherein potato slices are removed from the oil, and left to drain for up to two minutes.

7. A potato chip as claimed in Claim 5, wherein the par-cooked potato slices are reintroduced into the oil, at a constant temperature of 180-190 degrees C, for a period of approximately 2 minutes.

8. A potato chip as claimed in Claim 6, wherein the potato slices are removed from the cooking oil and drained. The slices are now in their final form, presenting an appealing textura dichotomy that manifests itself in a pleasing, golden coloured, crisp exterior and a tender, salt flavoured soggy interior. These cooked slices are known as chips.

9. A potato chip as described herein with reference to Figures 1-9 of the accompanying drawings.

10. A method of preparing a foodstuff from the potato comprising the following steps: a peeled and sliced raw potato steeped in a pre prepared sodium chloride salt solution, drained; aired; deep fried in triglyceride oil at a specified temperature for a specified period of time; removed from the frying medium and allowed to drain for a specified period of time; re-introduced to the triglyceride oil at a specified temperature for a second specified period of time, drained and served.
The IPKat does not have as much experience with patents as many of his readers, but on a first reading it didn't look to him that these would stand much of a chance of being allowed, even though some of them look on first sight to be worded in a somewhat obfuscatory way. It turns out that the Patent Office examiner thought so too. In a combined search and examination report, the examiner cited various documents, including a couple of web pages, that apparently comprehensively demolished the claims for either a lack of novelty or inventive step. The best bit of the report, in the IPKat's view, was the following:
"Claims 5 and 7 relate to the times and temperatures for each of the frying stages. I have objected to these claims under Novelty, as the times specified fall within the ranges disclosed in [US4447459]. However you may wish to argue that these claims are not anticipated. Moreover in [US4447459] the chips are fried at 350F (180C) in both stages, which is probably not what you intended. I am therefore objecting to these claims under Inventive step as well.

It is well known from Mrs Beeton to Delia Smith to double fry chips, heating the oil to a higher temperature for the second stage. The FOOD 911 recipe [an internet citation, sadly no longer apparently available] is given as an example of this method. Every cookery writer and internet recipe enthusiast will have their own particular variation on the exact temperature to use, and how long each stage might take. The frying time will depend on the shape of the chip, its moisture content and its temperature on entry into the hot oil, according to [US4447459] col 8 lines 64-66. To this list of parameters I would add the age and type of potato used, the size of the chip, and how long it has been soaked for. So the timings given are likely to be guidelines only.

The MACZIPPY recipe [another internet citation, also no longer available] for making chips soaks in salt water and then fries at a temperature of 320F followed by 375F (190C). The first temperature is a few degrees below the bottom of the range in Claim 5 and no times are specified. However, it would be obvious to a person skilled in the art of frying chips that they could modify MACZIPPY along the lines of FOOD 911 which initially fries at 325F (170C) for three minutes (as required by Claim 5), and then at 375F (190C) for four minutes. You may intend the second frying stage of Claim 7 to be carried out for only (approximately) two minutes and no longer, but as no reason has been given in the description for the selection of this particular time, this is a distinction which does not seem to be inventive."
The examiner also made a number of other objections to the claims on grounds of clarity, consistency and support, presumably for completeness.

Unfortunately, ActionAid failed to reply to the report, and the application was treated as refused once the Rule 34 period (as it was then known) ended on 11 August 2006.

In response to an enquiry about their application, Helen Jeffrey of ActionAid UK wrote back to the IPKat with the following:
"In regards to the Chip patent, this spoof patent was part of a campaign run by ActionAid in 2002 and is not related to our current work. We apologise for any confusion and we have now amended our website to make it clear that this is a previous campaign. Please see the amended webpage here.

This spoof chip patent application was a campaign device to highlight and draw attention to the issue of patents on food crops. We were very clear at the time in our press releases and materials that this was spoof application to draw attention to the issues. We do also have serious information about the patent system
online.

We did the application at the time of the deliberations of the Commission on Intellectual Property Rights (
CIPR) which was set up by the Department of International Development (DfID), and which was looking at the implications of IPR rules and development policies.

Many of ActionAid's key concerns were reflected in the final report by this CIPR in September 2002, and we felt that the investment of under £100 in the spoof chip patent application was a good and cost effective use of our precious resources."
The IPKat didn't want to waste any more of ActionAid's precious resources, so he left it at that (unlike fellow blogger Patently, who seems to be rather more persistent, as well as a bit ranty). He does, however, wonder whether ActionAid really thought at the time of making their application that it was a 'spoof patent', since their original post on the subject suggested that they thought they would be able to get a patent for their invention and thereby be in a position to threaten chip shops with infringement actions. If ActionAid were really trying to make a serious point about the patent system, the IPKat wonders why they have not clarified to their web readers that dodgy patent applications such as theirs will tend not to be granted. A bit of education about how the system really works might help to dispel some of the blatant misinformation that tends to surround stories such as these.

3 comments:

Anonymous said...

A waste of time. If they wanted to draw any real attention to patents for food crops they should have filed an application for a new herbal extract found in some plant, or a groundnuts variety, or something of that nature. This is not the US, where arguably anything goes (well, sort of). For your application to have any fighting chance, you must satisfy the criteria of novelty, inventive step and industrial application and steer clear of the exclusion groups(and there r quite a few). Also, your spec must be drafted in a particular way(both substance and form). Its quite rigidly applied (ask anyone who has tried to file an application for software, perpetual motion, online game or a UFO). You just cant think up random abstractions and hope to get anywhere. Maybe an improvement in an apparatus/ method of frying chips would have gone some way, but even then you couldn't possibly stop a prior user, and if your application encompasses them, or their process, then it probably wouldn't be new. Although some Patent attorneys in the UK despise (for a lack of a better word) UK IPO Patent examiners guts, thinking some of them to be, a bit daft (mainly because of blatant errors such as cited prior art being completely unrelated to the invention or some of the objections missing by miles the real point of an invention) generally the UK examiners are alright, compared to other countries and the system probably as functional as could possibly be.

Guy said...

Thanks David, you saved me a fiver! I was contemplating filing Form 23.

patently said...

:-D Great minds think alike. My copy of the file arrived on Friday!

It is clear from the file that the safeguards whose absence ActionAid decried were in fact fully operative, and able to prevent them from achieving the undesirable aim that their article implied was a given.

Their article was, in my opinion, misleading in many respects and simply untruthful in certain other respects. I await a response to these criticisms from them.

I do regret the fact that this will cause a charity to divert resources, but believe that if this causes them to properly research their campaigns in the fuure then that will be to the good.

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