Neptune Technologies and Bioressources has filed ‘continuation’ applications with the US Patent & Trademark Office (USPTO) it says will allow it to pursue “additional patent claims that should preclude our competitors from selling their krill oil products in the US".
Neptune has filed two continuations bolstering claims made in its #8,030,348 patent and one in relation to its #8,057,825 patent, which were granted in October and November 2011 respectively.
The #8,030,348 patent covers marine phospholipids to which the omega-3 fatty acids EPA and DHA are bound, and was immediately challenged by Neptune’s arch rival Aker BioMarine, which is one of several parties currently being sued by Neptune for allegedly infringing the patent.
It is also being re-examined by the USPTO following a request from Aker, which argues that its claims are ‘unpatentable’.
#8,057,825, which awards Neptune the exclusive use of krill extracts in the US as a method for reducing cholesterol, platelet adhesion and plaque formation, has also been challenged by Aker – which is still waiting to hear whether the USPTO will re-examine it.
'More difficult for a competitor to design around'
A continuation is a patent application which follows, and claims priority to, an earlier filed patent application, Neptune Vice President, Scientific Affairs, Dr Wael Massrieh told NutraIngredients-USA.
“We can’t give details at this stage as they are confidential, but the continuations will give our IP more strength and make it more difficult for a competitor to design around.”
He added: “The continuation applications were actually filed last summer so this is not a reaction to the re-examinations or to the allegations made by some of our competitors.
“The continuation application process should also be quicker [than the original patent application process] because the Patent Office is already familiar with our patents.”
Chief executive Henri Harland added: "These continuations are part of Neptune's continuous efforts to further strengthen our intellectual property and positioning in the US market, and will allow us to pursue additional patent claims that should preclude our competitors from selling their krill oil products in the US market."
Attorney: ‘You always get people saying ‘you can’t patent what’s found in nature’. Well that’s not strictly the case …’
The #8,030,348 has proved particularly contentious with critics arguing that Neptune should not have exclusive rights to sell a substance “found in nature”.
However, the law is quite nuanced in this regard, Minneapolis-based patent attorney Gary Speier told NutraIngredients-USA last week.
While Speier is not involved in this case and has not examined Neptune’s patents, he said that in general terms, it was surprising what could be patented in the world of natural ingredients.
“You always get people saying ‘you can’t patent what’s found in nature’. Well that’s not strictly the case. While a lot of patents in this area are process patents [where you are patenting the extraction process, for example], if you are the first to purify and isolate a natural product, you can patent it in its isolated form.”
The devil is in the detail, says Speier - a patent attorney at Schwegman, Lundberg & Woessner - but the compound must be novel (that is, there must have been no description of the compound in the literature), non-obvious (the compound cannot be too similar to a compound known in the literature), it must be useful, and you must describe how to make it (eg. purify it) and how to use it.
He added: "Continuation applications are very common and is a clear indication that they believe the technology to be commercially significant. [They are a] way to add to and boost your patent claims on an ongoing basis."
Aker BioMarine declined to comment on the continuation applications.