Impossible™ Foods: Protecting Plant-Based Meat Substitutes having the Aroma and Flavor of Meat - Lexology

2023-02-22 05:44:59 By : Mr. Bob Yu

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Impossible™ Foods: Protecting Plant-Based Meat Substitutes having the Aroma and Flavor of Meat - Lexology

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In 2011, Impossible™ Foods (Impossible) was founded with the aim of providing meat products with the taste and nutritional benefits of meat but without the negative health and environmental impacts. In 2016, Impossible™ launched its first product, the Impossible™ burger, which is available in restaurants (e.g., Burger King®) and grocery stores. The four main ingredients in the Impossible™ burger are protein (soy and potato proteins), fat (coconut and sunflower oils), binders (methylcelluloses) and flavor (a heme, specifically, soy leghemoglobin). As discussed in more detail below, Impossible™ discovered that heme is the key ingredient that provides meat with its aroma and flavor.

Impossible™ discovered that certain characteristics of meaty flavors (e.g., beef, bacon, umami, savory, blood, etc.) produced during the cooking process were the result of a chemical reaction between flavor precursor molecules and iron complexes. As a result of this discovery, Impossible™ combined flavor precursor molecules and iron complexes to produce consumable food products having a range of savory and meaty aromas and tastes.

The flavor precursor molecules that can be used in these products can be sugars, sugar alcohols, sugar acids, sugar derivatives (e.g., glucose, fructose, ribose, sucrose, etc.), oils (e.g., coconut oil, mango oil, sunflower oil, cottonseed oil, etc.), free fatty acids (e.g., caprylic acid, capric acid, lauric acid, myristic acid, oleic acid, etc.), amino acids and derivatives thereof (e.g., cysteine, cystine, methionine, isoleucine, leucine, lysine, etc.), nucleosides and nucleotides (e.g., inosine, guanosine, adenosine, etc.), vitamins (e.g., vitamin D, vitamin B6, vitamin E), acids (e.g., acetic acid, alpha hydroxy acids, tricarboxylic acids, dicarboxylic acids, etc.), peptides and protein hydrolysates (e.g., glutathione, vegetable protein hydrolysates, etc.), or extracts (e.g., malt extracts, yeast extract, etc.).

The iron complexes that can be used can be a heme moiety or other highly conjugated heterocyclic ring complexed to an iron ion. Specifically, the heme moiety can be a heme cofactor, such as a heme-containing protein. Heme-containing proteins include globins, such as soy leghemoglobin, which is currently used in the Impossible™ burger.

It is not surprising that Impossible™ filed for patent protection covering food products containing these iron complexes having the flavor and aroma of meat. This post examines one patent family owned by Impossible™ covering these food products. Specifically, this post compares the issued claims granted in Australia, Europe, Japan, Russia, and the United States (U.S.).

1. A ground beef-like food product, comprising:

a) 1% – 5% by weight of a heme-containing protein;

b) a compound selected from glucose, ribose, fructose, lactose, xylose, arabinose, glucose-6-phosphate, maltose, and galactose, and mixtures of two or more thereof;

c) at least 1.5 mM of a compound selected from cysteine, cystine, thiamine, methionine, and mixtures of two or more thereof; and

d) one or more plant proteins;

wherein the ground beef-like food product contains no animal product;

wherein cooking the ground beef-like food product results in the production of at least two volatile compounds which have a beef-associated aroma.

Australia Patent No. 2018200969B2 (Divisional of Australia Patent No. 2014205114B2)

a) a porphyrin or a chlorin complexed to an iron ion; and

b) one or more flavor precursor molecules selected from the group consisting of glucose, fructose, ribose, arabinose, glucose-6-phosphate, fructose 6-phosphate, fructose 1,6-diphosphate, maltose, galactose, lactose, xylose, sucrose, maltodextrin, thiamine, cysteine, cystine, a cysteine sulfoxide, allicin, selenocysteine, methionine, isoleucine, leucine, lysine, phenylalanine, threonine, tryptophan, 5-hydroxytryptophan, valine, arginine, histidine, alanine, asparagine, aspartate, glutamate, glutamine, glycine, proline, serine and tyrosine;

wherein cooking imparts a taste and smell of meat to the meat substitute; and

wherein said porphyrin or a chlorin complexed to an iron ion is ferrous chlorin.

a) a heme-containing protein; and

b) at least two flavor precursor molecules selected from the group consisting of glucose, fructose, ribose, arabinose, glucose-6-phosphate, fructose 6-phosphate, fructose 1,6-diphosphate, maltose, galactose, lactose, xylose, sucrose, maltodextrin, thiamine, cysteine, cystine, a cysteine sulfoxide, allicin, selenocysteine, methionine, isoleucine, leucine, lysine, phenylalanine, threonine, tryptophan, 5-hydroxytryptophan, valine, arginine, histidine, alanine, asparagine, aspartate, glutamate, glutamine, glycine, proline, serine and tyrosine;

wherein a taste and smell of meat is given to the meat substitute during the cooking process.

Note: claim 1 as shown above is the claim as granted. EP Patent No. 2943072B1 is currently subject of an opposition, the claims as granted may change as a result of the opposition procedure.

1. A food product which, when cooked, reproduces the taste of meat products, comprising:

a) 1% to 1% (w/v) of a heme-containing protein;

b) sugars, sugar alcohols, sugar acids or sugar derivatives selected from glucose, ribose, fructose, lactose, xylose, arabinose, glucose-6-phosphoric acid, maltose, galactose, and mixtures of two or more of these;

c) a compound selected from cysteine, cystine, selenocysteine, thiamine, and mixtures of 2 or more of these; and

d) one or more plant proteins.

a) a highly conjugated heterocyclic ring complexed with an iron ion; and

b) one or more taste precursor molecules selected from the group consisting of: glucose, fructose, ribose, arabinose, glucose-6-phosphate, fructose-6-phosphate, fructose-1,6-diphosphate, inositol, maltose, sucrose, maltodextrin, glycogen, nucleotide bound sugars, molasses, lecithin, inosine, inosine monophosphate (IMP), guanosine monophosphate (HMP), pyrazine, adenosine monophosphate (AMP), lactic acid, succinic acid, glycolic acid, thiamine , creatine, pyrophosphate, algae oil, safflower oil, linseed oil, rice oil, cottonseed oil, coconut oil, mango oil, cysteine, methionine, isoleucine, leucine, lysine, phenylalanine, threonine, tryptophan, valine, arginine, histidine, alanine, asparagine, aspartate, glutamate, glutamine, glycine, proline, serine, tyrosine, glutathione, an amino acid derivative, protein hydrolysate, malt extract, yeast extract, and peptone.

U.S. Patent No. 9,700,067B2

1. A ground beef-like food product comprising:

a) 1%-5% by weight of a heme-containing protein comprising an amino acid sequence having at least 80% sequence identity to the polypeptide set forth in SEQ ID NO:4;

b) a compound selected from glucose, ribose, fructose, lactose, xylose, arabinose, glucose-6-phosphate, maltose, and galactose, and mixtures of two or more thereof;

c) at least 10 mM of a compound selected from cysteine, cystine, selenocysteine, thiamine, methionine, and mixtures of two or more thereof; and

d) 10% or more by weight of one or more plant proteins;

wherein the ground beef-like food product contains no animal products; and

wherein cooking the ground beef-like food product results in the production of at least two volatile compounds which have a beef-associated aroma.

U.S. Patent No. 9,808,029B2 (Continuation of U.S. Patent No. 9,943,096B2)

1. A ground beef-like food product, comprising:

a) 01%-5% by weight of a heme-containing protein;

b) a compound selected from glucose, ribose, fructose, lactose, xylose, arabinose, glucose-6-phosphate, maltose, and galactose, and mixtures of two or more thereof;

c) at least 1.5 mM of a compound selected from cysteine, cystine, thiamine, methionine, and mixtures of two or more thereof, and

d) one or more plant proteins;

wherein the ground beef-like food product contains no animal product; and

wherein cooking the ground beef-like food product results in the production of at least two volatile compounds which have a beef-associated aroma.

U.S. Patent No. 9,826,772B2 (Continuation of U.S. Patent No. 9,943,096B2)

1. A ground beef-like food product, comprising:

a) 1%-5% by weight of a heme-containing protein;

b) a compound selected from glucose, ribose, fructose, lactose, xylose, arabinose, glucose-6-phosphate, maltose, and galactose, and mixtures of two or more thereof;

c) at least 10 mM of a compound selected from cysteine, cystine, thiamine, methionine, and mixtures of two or more thereof; and

d) one or more plant proteins;

wherein the ground beef-like food product contains no animal product; and

wherein cooking the ground beef-like food product results in the production of at least two volatile compounds which have a beef-associated aroma.

U.S. Patent No. 9,943,096B2 (continuation of U.S. Patent No. 9,700,067B2)

1. A food flavor additive composition comprising:

a) an isolated heme-containing protein;

b) a compound selected from glucose, ribose, fructose, lactose, xylose, arabinose, glucose-6-phosphate, maltose, maltodextrin, and galactose, and mixtures of two or more thereof; and

c) a compound selected from cysteine, cystine, thiamine, methionine, and mixtures of two or more thereof;

wherein the flavor additive composition contains no animal products; and

wherein cooking the food flavor additive composition results in the production of at least two volatile compounds which have a meat-associated aroma.

U.S. Patent No. 10,314,325B2 (Continuation of U.S. Patent No. 9,943,096B2)

a) a heme, wherein the heme is present in an amount equivalent to the amount of heme present in the food product when the food product contains a heme-containing protein in an amount of 0.01% to 5% by weight;

b) a compound selected from glucose, ribose, fructose, lactose, xylose, arabinose, glucose-6-phosphate, maltose, and galactose, and mixtures of two or more thereof;

c) at least 1.5 mM of a compound selected from cysteine, cystine, thiamine, methionine, and mixtures of two or more thereof; and

d) one or more plant proteins;

wherein the food product contains no animal product; and

wherein cooking the food product results in the production of at least two volatile compounds selected from the group consisting of (1-ethyl-1-propenyl)-benzene, (E)-2-decenal, (E)-2-heptenal, (E)-2-hexenal, (E)-2-nonenal, (E)-2-octen-1-ol, (E)-2-octenal, (E)-2-tridecen-1-ol, (E)-3-penten-2-one, (E)-4-octene, (E)-5-decene, (E,E)-3,5-octadien-2-one, (Z)-2-decenal, (Z)-2-heptenal, (Z)-3-decen-1-ol, acetate, [(methyl sulfonyl)methyl]-benzene, 1-(ethylthio)-2-(methylthio)-buta-1,3-diene, 1-(methylthio)-propane, 1,1′-(1,2-cyclobutanediyl)bis-cis-benzene, 1,10-undecadiene, 1,3,5-cycloheptatriene, 1,3-bis(1,1-dimethylethyl)-benzene, 1,3-diisopropoxy-1,3-dimethyl-1,3-disilacyclobutane, 1,3-dimethyl-benzene, 1-decen-3-one, 1-heptanol, 1-heptyl-1,2,3,4-tetrahydro-4-methyl-naphthalene, 1-hexanol, 1-hydroxy-2-propanone, 1-nonanol, 1-octanol, 1-octen-3-ol, 1-octen-3-one, 1-octene, 1-pentanol, 1-penten-3-one, 1-undecanol, 2,2,4,6,6-pentamethyl-heptane, 2,3,4-trimethyl-pentane, 2,3-butanedione, 2,3-dihydro-5-methyl-furan, 2,3-dimethyl-pyrazine, 2,4-decadienal, 2,4-dimethyl-1-heptene, 2,5-dimethyl-pyrazine, 2-acetatyl-1-propene, 2-acetyl-propen-2-ol, 2-acetylthiazole, 2-butanone, 2-butenal, 2-butyl-1-decene, 2-decanone, 2-decenal, 2-ethyl-5-methyl-pyrazine, 2-ethylacrolein, 2-ethyl-furan, 2-heptanone, 2-heptenal, 2-hexyl furan, 2-methyl-1(H)-pyrrole, 2-methyl-1-heptene, 2-methyl-1-penten-1-one, 2-methyl-3-(methylthio) furan, 2-methyl-3-furanthiol, 2-methyl-5-(methylthio)-furan, 2-methyl-butanal, 2-methyl-cyclopentanone, 2-methyl-furan, 2-methyl-heptane, 2-methyl-pentanal, 2-methyl-propanal, 2-methyl-thiazole, 2-n-octylfuran, 2-nonanone, 2-nonen-4-one, 2-octanone, 2-octenal, 2-pentanone, 2-pentyl-furan, 2-pentyl-thiophene, 2-phenylpropenal, 2-propenal, 2-propenoic acid, methyl ester, 2-thiophenecarboxaldehyde, 2-tridecen-1-ol, 2-undecanone, 2-undecenal, 3-(methylthio)-propanenitrile, 3-(phenylmethyl)-2,5-piperazinedione, 3,3′-dithiobis-2-methyl-furan, 3,5-bis(1,1-dimethylethyl)-phenol, 3,5-di-tert-butylbenzoic acid, 3-decen-2-one, 3-ethylcyclopentanone, 3-ethyl-pentane, 3-methyl-2-butenal, 3-methyl-2-thiophenecarboxaldehyde, 3-methyl-3-buten-2-one, 3-methyl-butanal, 3-methyl-furan, 3-methylheptyl acetate, 3-methyl-pentanal, 3-pentyl-furan, 3-phenyl-furan, 3-thiophenecarboxaldehyde, 3-thiophenemethanol, 4,7-dimethyl-undecane, 4-chloro-2,6-bis(1,1-dimethylethyl)-phenol, 4-ethoxy-benzoic acid, ethyl ester, 4-ethyl-2-methyl-pyrrole, 4-ethyl-benzaldehyde, 4-methyl-2-heptanone, 4-methyl-5-thiazoleethanol, 4-methylthiazole, 4-nitrophenyl 2-thiophenecarboxylic acid ester, 4-penten-2-one, 4-quinolinecarboxaldehyde, 5-(2-chloroethyl)-4-methylthiazole, 5-ethenyl-4-methyl-thiazole, 5-ethyldihydro-2(3H)-furanone, 5-formyl-4-methylthiazole, 5-methyl-1-undecene, 6-methyl-2-heptanone, 7-methyl-(E)-5-undecene, 9-octadecenal, acetaldehyde, acetic acid, acetone, acetonitrile, acetophenone, acetyl valeryl, aminophenylacetylene, benzaldehyde, benzene, benzoic acid, benzyl alcohol, bis(2-methyl-4,5-dihydro-3-furyl) disulfide, butanal, butanone, butyrolactone, carbon disulfide, decanal, dihydro-3-(2H)-thiophenone, dihydro-5-pentyl-2(3H)-furanone, dimethyl selenone, dimethyl sulfide, dimethyl trisulfide, dodecanal, ethanol, ethyl acetate, formic acid, heptyl ester, furan, furfural, heptanal, hexanoic acid, isopropyl alcohol, isothiazole, isothiocyanato-methane, m-aminophenylacetylene, methacrolein, methanethiol, methional, methyl (methylthio)methyl disulfide, methyl isopropyl disulphide, methyl thiolacetate, methyl vinyl ketone, methyl-pyrazine, methyl-thiirane, nonanal, octanal, octane, oxalic acid, diallyl ester, oxalic acid, isobutyl pentyl ester, p-Cresol, p-dithiane-2,5-diol, pentanal, pentanoic acid, 2,2,4-trimethyl-3-hydroxy-, isobutyl ester, phenol, phenylacetaldehyde, propanal, propyl-cyclopropane, p-xylene, pyrazine, pyrrole, styrene, thiazole, thiocyanic acid, methyl ester, thiophene, toluene, trans-2-(2-pentenyl)furan, trichloromethane, and tridecane.

U.S. Patent No. 10,327,464B2 (Continuation of U.S. Patent No. 9,943,096B2)

a) 01%-5% by weight of a heme-containing protein;

b) a compound selected from glucose, ribose, fructose, lactose, xylose, arabinose, glucose-6-phosphate, maltose, and galactose, and mixtures of two or more thereof;

c) at least 1.5 mM of a compound selected from cysteine, cystine, thiamine, methionine, and mixtures of two or more thereof; and

d) one or more plant proteins;

wherein the food product contains no animal products that contain heme; and

wherein cooking the food product results in the production of at least two volatile compounds selected from the group consisting of (1-ethyl-1-propenyl)-benzene, (E)-2-decenal, (E)-2-heptenal, (E)-2-hexenal, (E)-2-nonenal, (E)-2-octen-1-ol, (E)-2-octenal, (E)-2-tridecen-1-ol, (E)-3-penten-2-one, (E)-4-octene, (E)-5-decene, (E,E)-3,5-octadien-2-one, (Z)-2-decenal, (Z)-2-heptenal, (Z)-3-decen-1-ol, acetate, [(methylsulfonyl)methyl]-benzene, 1-(ethylthio)-2-(methylthio)-buta-1,3-diene, 1-(methylthio)-propane, 1,1′-(1,2-cyclobutanediyl)bis-cis-benzene, 1,10-undecadiene, 1,3,5-cycloheptatriene, 1,3-bis(1,1-dimethylethyl)-benzene, 1,3-diisopropoxy-1,3-dimethyl-1,3-disilacyclobutane, 1,3-dimethyl-benzene, 1-decen-3-one, 1-heptanol, 1-heptyl-1,2,3,4-tetrahydro-4-methyl-naphthalene, 1-hexanol, 1-hydroxy-2-propanone, 1-nonanol, 1-octanol, 1-octen-3-ol, 1-octen-3-one, 1-octene, 1-pentanol, 1-penten-3-one, 1-undecanol, 2,2,4,6,6-pentamethyl-heptane, 2,3,4-trimethyl-pentane, 2,3-butanedione, 2,3-dihydro-5-methyl-furan, 2,3-dimethyl-pyrazine, 2,4-decadienal, 2,4-dimethyl-1-heptene, 2,5-dimethyl-pyrazine, 2-acetatyl-1-propene, 2-acetyl-propen-2-ol, 2-acetylthiazole, 2-butanone, 2-butenal, 2-butyl-1-decene, 2-decanone, 2-decenal, 2-ethyl-5-methyl-pyrazine, 2-ethylacrolein, 2-ethyl-furan, 2-heptanone, 2-heptenal, 2-hexyl furan, 2-methyl-1(H)-pyrrole, 2-methyl-1-heptene, 2-methyl-1-penten-1-one, 2-methyl-3-(methylthio) furan, 2-methyl-3-furanthiol, 2-methyl-5-(methylthio)-furan, 2-methyl-butanal, 2-methyl-cyclopentanone, 2-methyl-furan, 2-methyl-heptane, 2-methyl-pentanal, 2-methyl-propanal, 2-methyl-thiazole, 2-n-octylfuran, 2-nonanone, 2-nonen-4-one, 2-octanone, 2-octenal, 2-pentanone, 2-pentyl-furan, 2-pentyl-thiophene, 2-phenylpropenal, 2-propenal, 2-propenoic acid, methyl ester, 2-thiophenecarboxaldehyde, 2-tridecen-1-ol, 2-undecanone, 2-undecenal, 3-(methylthio)-propanenitrile, 3-(phenylmethyl)-2,5-piperazinedione, 3,3′-dithiobis-2-methyl-furan, 3,5-bis(1,1-dimethylethyl)-phenol, 3,5-di-tert-butylbenzoic acid, 3-decen-2-one, 3-ethylcyclopentanone, 3-ethyl-pentane, 3-methyl-2-butenal, 3-methyl-2-thiophenecarboxaldehyde, 3-methyl-3-buten-2-one, 3-methyl-butanal, 3-methyl-furan, 3-methylheptyl acetate, 3-methyl-pentanal, 3-pentyl-furan, 3-phenyl-furan, 3-thiophenecarboxaldehyde, 3-thiophenemethanol, 4,7-dimethyl-undecane, 4-chloro-2,6-bis(1,1-dimethylethyl)-phenol, 4-ethoxy-benzoic acid, ethyl ester, 4-ethyl-2-methyl-pyrrole, 4-ethyl-benzaldehyde, 4-methyl-2-heptanone, 4-methyl-5-thiazoleethanol, 4-methylthiazole, 4-nitrophenyl 2-thiophenecarboxylic acid ester, 4-penten-2-one, 4-quinolinecarboxaldehyde, 5-(2-chloroethyl)-4-methylthiazole, 5-ethenyl-4-methyl-thiazole, 5-ethyldihydro-2(3H)-furanone, 5-formyl-4-methylthiazole, 5-methyl-1-undecene, 6-methyl-2-heptanone, 7-methyl-(E)-5-undecene, 9-octadecenal, acetaldehyde, acetic acid, acetone, acetonitrile, acetophenone, acetyl valeryl, aminophenylacetylene, benzaldehyde, benzene, benzoic acid, benzyl alcohol, bis(2-methyl-4,5-dihydro-3-furyl) disulfide, butanal, butanone, butyrolactone, carbon disulfide, decanal, dihydro-3-(2H)-thiophenone, dihydro-5-pentyl-2(3H)-furanone, dimethyl selenone, dimethyl sulfide, dimethyl trisulfide, dodecanal, ethanol, ethyl acetate, formic acid, heptyl ester, furan, furfural, heptanal, hexanoic acid, isopropyl alcohol, isothiazole, isothiocyanato-methane, m-aminophenylacetylene, methacrolein, methanethiol, methional, methyl (methylthio)methyl disulfide, methyl isopropyl disulphide, methyl thiolacetate, methyl vinyl ketone, methyl-pyrazine, methyl-thiirane, nonanal, octanal, octane, oxalic acid, diallyl ester, oxalic acid, isobutyl pentyl ester, p-Cresol, p-dithiane-2,5-diol, pentanal, pentanoic acid, 2,2,4-trimethyl-3-hydroxy-, isobutyl ester, phenol, phenylacetaldehyde, propanal, propyl-cyclopropane, p-xylene, pyrazine, pyrrole, styrene, thiazole, thiocyanic acid, methyl ester, thiophene, toluene, trans-2-(2-pentenyl)furan, trichloromethane, and tridecane.

This post was written by Lisa Mueller.

Back on April 2, 2015, the U.S. Patent and Trademark Office (USPTO) published final rules for implementing the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs July 2, 1999 (Final Rules). Implementation of the Hague Agreement was significant because it allowed Applicants to (1) file a single international design application with the USPTO as the “office of indirect filing”; (2) designate multiple Hague Agreement member countries and pay filing fees for each designated country; and (3) benefit from the resulting registration becoming effective and enforceable in each of the designed countries.

Also included in the Final Rules, however, was a change that impacted U.S. utility patent practice, specifically, the filing of a Request for Continued Examination (RCE). Most importantly, the Final Rules clarified that the filing of an RCE under 37 CFR. § 1.114 was not applicable in international design applications and excluded U.S. National Stage Patent Cooperation Treaty (PCT) applications that did not comply with 35 U.S.C. § 371. On page 17930 of its summary of the Final Rules, the USPTO explained that this change to Section § 1.114 was made to “clarify that the request for continued examination practice set forth in § 1.114 added in section 4403 of the AIPA [American Inventors Protection Act of 1999] does not apply to an international application until the international application complies with 35 U.S.C. § 371 (which requires the filing of an inventor’s oath or declaration (or substitute statement) in the international application, as well, as for example, the basic national fee and an English language translation of the international application if filed in another language)”. As a result, the USPTO amended § 1.114 by revising paragraphs (e)(3)-(5) and adding paragraph (e)(6) to currently read as shown below:

§ 1.114 REQUEST FOR CONTINUED EXAMINATION. (a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) …. ***** (e) The provisions of this section do not apply to: (1) A provisional application (2) An application for a utility or plant patent filed under 35 U.S.C. § 111(a) before June 8, 1995; (3) An international application filed under 35 U.S.C. 363 before June 8, 1995 or an international application that does not comply with 35 U.S.C. § 371; (4) An application for a design patent; (5) An international design application; or (6) A patent under reexamination.

The Final Rules became effective on May 13, 2015. Thus, beginning on this date, a U.S. National Stage PCT application for which an inventor’s oath or declaration (or substitute statement) had not been filed was not eligible for an RCE filing.

Last week, Applicants who filed an RCE in a U.S. National Stage PCT application in which an inventor oath or declaration had not been filed began receiving Notices of Abandonment which stated:

“The Office acknowledges the filing off the Request for Continued Examination (RCE) on January 1, XXXX. However, the RCE provisions of 37 CFR 1.114 do not apply to an international application that does not comply with 35 U.S.C. 371. See 37 CFR 1.114(e)(3). An inventor’s oath or declaration for each named inventor is required for an international application to comply with 35 U.S.C. 371, notwithstanding the changes permitting applicants to postpone filing the inventor’s oath or declaration until the date on which the issue fee is paid. See 37 CFR 1.495(c)(3)(ii). See also Changes To Implement the Hague Agreement Concerning International Registration of Industrial Designs, Final Rule, 80 Fed. Reg. 17918, 17930 (April 2, 2015). The present application, which is a national stage entry of an international application, has not met the requirement of 35 U.S.C. 371(c)(4) in that a compliant inventor’s oath or declaration has not been filed for each named inventor. Accordingly, as a proper reply to the Office Action mailed on June 1, XXXX, has not been timely filed, the application is abandoned.”

The receipt of these Notices of Abandonment came as a complete surprise to many Applicants and has led to the question as to “What do you do if you find yourself in this predicament?”

For pending U.S. National Stage PCT applications:

Patents issued from U.S. National Stage PCT applications in which an RCE was filed without an inventor oath or declaration:

Consider filing an RCE form with the executed inventor oaths or declarations or substitute statements and a Petition for Revival of an Application for Patent Abandoned Unintentionally under 37 CFR § 1.137(a) (Petition to Revive) and petition fee as soon as possible.

Although it may appear odd to be filing a Petition to Revive on an issued patent, the USPTO has previously granted such petitions. For example, a Petition to Revive was granted in U.S. Patent No. 6,872,198 (the ‘198 patent). U.S. Application No. 10/231,748 (Application), which issued as the ‘198 patent, was filed with a nonpublication request under 35 U.S.C. § 122(b)(2)(B)(i). A PCT application was later filed claiming priority to the Application. During litigation, it was alleged that the Application should have been abandoned under 35 U.S.C. § 122(b)(2)(B)(iii) for failure to notify the U.S. Patent Office of the PCT filing. The Patent Owner filed a Rescission of Previous Nonpublication Request and a Petition to Revive on March 23, 2006. The USPTO granted the petition on August 17, 2006. In its Decision Granting Petition Under 37 CFR § 1.137(b) (Decision), the USPTO noted that “[T]his application matured into Patent No. 6,872,198 on March 29, 2005. Therefore, no further action being required, this patented file is being referred to Files Repository.” Copies of the Petition to Revive and Decision are provided here:

The ‘198 patent was the subject of litigation in Arrow Intern. v. Spire Biomedical, Inc., 443 F.Supp.2d 182 (D. Mass. 2006) and Arrow Intern. v. Spire Biomedical, Inc., 635 F.Supp.2d 46 (D. Mass. 2009).

Additionally from a policy perspective, perhaps a technical correction to the statute should be considered that (1) would be retroactive; and (2) would make RCEs in these applications proper provided that all the requirements under 35 U.S.C. § 371 were satisfied by the time the issue fee is paid. Such a revision of the statute would be consistent with 35 U.S.C. 115(f), which requires the oath or declaration to be filed no later than the date on which the issue fee for the patent is paid.

Considerations for future U.S. National Stage PCT Application filings

One option when filing a U.S. National Stage PCT application is to file the application as a 35 U.S.C. § 120 continuation application, which is also known as a “pass through” or “bypass” continuation. Filing a bypass continuation avoids the need to submit an oath or declaration before the filing of an RCE. Another option is to include inventor signatures as part of the PCT Request (Form PCT/RO/101) by utilizing Box VIII(iv). Alternatively, signatures of the inventors can be included on Form PTO/AIA/01 using the PCT international application number to identify the application to which the declaration is directed and submit the form upon entering the national phase.

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Impossible™ Foods: Protecting Plant-Based Meat Substitutes having the Aroma and Flavor of Meat - Lexology

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