Q: Am I violating patents awarded to Perfect Day Foods if I produce cow's milk using methods other than yeast fermentation?

A: I try to give answers that are useful to many people using this system rather than getting into the weeds.

First, in order to infringe a patent claim, you need to have every noun, verb, and other limitation present in at least one independent claim in the patent while the patent is in force. In some instances a known substitute for one of the nouns or verbs can still be within the scope of the claims under the doctrine of equivalents (DOE). Analysis under DOE is tricky and not a good fit for this forum as you are looking to see whether the substitute fits within this legal extension or whether the process of seeking the patent can be interpreted as excluding the substitute.

So it is likely that if the claims call for the use of yeast and you do not use yeast, that you are not infringing the claim. However, one would need to dig deeper to see if DOE applies.

Second, it is very common for a patent to end early for failure to pay maintenance fees that are required to keep the patent in force. So that is another item that needs to be checked as the maintenance fees may have lapsed years ago.

Finally, a US patent only precludes others from making, using, selling, or offering to sell a product covered by the patent in the United States. So if you will be doing what you do in Africa and not importing anything into the US, then a US patent is not of concern. You can look under the relevant patent system where you are located to see if there is an analogous patent filed there. You may want to use https://www.wipo.int/patentscope/en/ as one place to search for patents that are in the same patent family as the one you found. There may be other relevant patents that are not connected to this one patent family so you may want to check with a local patent attorney. You would be asking for a Freedom-to-Operate search.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

A: Congratulations on making a potentially very useful product. I hope that it is a success.

Your questions are the type of question that you will need to hire a patent lawyer. Your questions are not easy to answer with spending significant time on it. However, in addition to what Mr. Flynn mentioned, here are a couple of points to consider:

(1) If you are going to be making your cow’s milk substitute in your country in Africa, and selling it there, then you need to worry only about your country’s patents. Patents from the US, Europe, Japan, etc., are not to be held against you. But if you make it in your country, and export it to other countries, then you have to worry about patents in your country and in the country where you are exporting it.

(2) I am not sure which patent you are referring to. But if you are referring, for example, to US 9,924,728, then that patent has issued in the US, and corresponding applications have also been filed in Australia, Japan, Canada, Europe, and Mexico. As far as I can tell, it is not in any countries in Africa.

(3) The International Patent Application has 100 claims, some of which are to the milk, some are to a powder, some are to a nuclei acid, some are to a host cell, some are to a method of producing the milk, and some are to a kit. If you produce the same milk, but a different way, then you would be not infringing the method claims, but you would be infringing on the milk claim.

By the way, I deal with these type of questions in food chemistry patent all the time.

Good luck!