Below, are all the patent applications of Nestle, with respect to urolithin A.
Below is a primer on patents, from Cornell Law School.
The leading case on patents is Diamond v. Chakrabarty:
35 U.S.C. 101, provides:
“Whoever invents or discovers (1) any new and useful process, (2) machine, (3) manufacture, or (4) composition of matter, or any new and useful (5) improvement thereof, **may obtain a patent therefor **, subject to the conditions and requirements of this title.”
There is no provision for obtaining a patent for the use to which a substance is directed, contrary to the email of Nestle:
One of their many companies has done some research using Urolithin A, and
they have protection over its use for muscle growth.
The above is neither a (1) new and useful process, (2) machine, (3) manufacture, or (4) composition of matter,
nor is it any new and useful improvement of (1) new and useful process, (2) machine, (3) manufacture, or (4) composition of matter.
Their purported research on Urolithin A for use in muscle growth is not a process, a machine, a manufacture, nor a composition of matter. Their attempt to patent use for muscle growth, therefore, is a mirage.
I would continue selling in the US, and wait for litigation. Let them file, and try to get a TRO, so that the burden of proof (that use is patentable,) falls on their shoulders. What is the worse that could happen? They get a royalty on your sales.
Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.
Note, it says invention. There is no invention from them, here.
They may also be awarded attorney’s fees, in “exceptional cases”. That is iffy, considering that urolithin A, the substance, is not patentable, and they so admit in their communication with DoNotAge.
The entire Patent Law is found below: