Mars turns up the heat on Kraft’s summer-proof chocolate

If you thought inventing heat-resistant chocolate is patent-worthy, you would be wrong. Well, at least according to the recent Australian Patent Office decision in Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62.

Patent applications in Australia

A granted patent prevents the unauthorised use of an invention by any third party for up to 20 years (in certain circumstances protection can be extended to 25 years). Accordingly, in Australia, there is a high threshold that applicants need to meet to be granted a patent. This threshold includes the need for patent claims to be clear and supported.

The opposition

In opposing Kraft’s patent application for summer-proof chocolate, Mars relied on the following grounds of opposition:

1. Lack of novelty (i.e., it isn’t new to the market);
2. There is no inventive step (i.e., the idea is obvious to a chocolate manufacturer);
3. Utility - a patent must be considered useful (i.e., does it satisfy a need or overcome a known problem?);
4. Lack of support and lack of clarity; and
5. The patent doesn’t disclose a manner of manufacture (Kraft must disclose the way in which the summer-proof chocolate can be made by a chocolate manufacturer).

In particular, Mars brought to the Deputy Commissioner of Patent’s attention that Kraft’s patent claimed that when 1 to 15 per cent by weight (‘wt%’) of dextrose monohydrate is used in the production of the heat-resistant chocolate, it would yield 1 to 15 wt% of dextrose in the final product.

However, Mars was able to show that this claim lacked support as testing revealed that the yield of dextrose was actually 0.91 to 13.65 wt%.

The decision

While Kraft argued that the lack of preciseness is in an acceptable range, the Deputy Commissioner of Patents disagreed. Deputy Commissioner McCaffery noted that there is a 10 per cent difference between the claimed yielded dextrose and the actual result; and added that ‘[w]hilst a workable standard would provide for some imprecision, including rounding of figures, the level of imprecision here is not appropriate’.

Ultimately, Mars succeeded with Deputy Commissioner McCaffery determining that the opposition be successful citing several claims lacking clarity and support.

Does Kraft have chocolate all over its face?

Notwithstanding the above, Deputy Commissioner McCaffery considered the claims to be otherwise novel and inventive; and left the door open to overcome the lack of clarity and support.

If during the next to two months Kraft appropriately amends the specification, it may still proceed to grant, providing a clean solution to what is a sticky situation for Kraft.

Key takeaways

1. In Australia there is a high threshold that applicants need to meet to be granted a patent;
2. Patent applications must have sufficient support and clarity to meet such a threshold; and
3. The claims of a patent application must be backed up by real-world evidence that the results are a true reflection of the claims, otherwise, like in the case of Kraft’s summer-proof chocolate, close enough is not good enough.

Macpherson Kelley first published a version of this article, and to the extent that elements of this article are the same as or similar to another version, they are published here with permission.