Whenever I speak at a cannabis industry conference, I spend some time discussing the importance of investing in intellectual property portfolios and preparing for the cannabis patent wars to come. As the cannabis industry becomes larger, patent rights for innovations will become increasingly valuable.
Cannabis patents are being issued right now. And it won’t be long before cannabis companies start fighting over them. Other factors being equal, the winners of the cannabis patent wars will dominate the post-prohibition industry.
A plant patent grants protection to a cannabis varietal by giving its owner the right to prevent others (that is, someone who does not have a license from the owner of the patent) from reproducing, using, importing or selling that cultivar or any of its parts in the United States.
Traditionally, the majority of plant patents have been granted for horticultural varieties. However, on Dec. 16, 2016, the first plant patent covering a cannabis variety (PP27,475) was issued.
A plant patent application is a fairly complex document that must present evidence to support key points and fulfill technical requirements of the plant patent statutes. In the excitement of this new cannabis patent age, it is ideal to work with an attorney who is an expert in life science as well as patent law. To prepare a successful plant patent application, it is necessary to be familiar with the legal requirements and have a good understanding of botanical and horticultural terminology.
Key criteria that must be met for a cannabis varietal to be eligible for a plant patent are: a) it must be new — which means it cannot have been disclosed or offered for sale more than one year prior to filing a plant patent application; b) it must be asexually reproduced; c) the asexually reproduced varietal must have been the product of plant breeding or have been discovered on cultivated land; and d) it must be stable and distinctive.
Plant patent applications must be filed within one year after the strain is first offered for sale or sold in the market, so the time to start preparing to obtain plant patent protection is now. It is important to document and collect relevant information throughout a strain’s growth season to support the requirements of the plant patent statutes.
The following list includes some of the items needed to prepare a successful plant patent application:
– High-quality photographs of the plant at each stage of growth and close-up and/or microscopic photos where appropriate. The color of the plant at each stage of growth is particularly important. Include an 18% gray card in the edge of each photograph.
– A detailed description of the plant at each stage of growth, particularly of the characteristics are different from other strains and different from the parental strains.
– The time of planting, the number of days from planting to harvest and the environment in which the plant is grown (such as field grown, greenhouse grown, grown under artificial lights, hydroponic or soil grown).
– The type of soil and growth conditions such as temperature, rain and irrigation. In the case of greenhouse and artificial light conditions, it’s important to indicate the temperature regime and the soil/hydroponic conditions.
– Information on disease resistance and productivity, or any unusual form or structure of the plant.
– Analysis of natural product chemistry, particularly of the mature plant at harvest. If the chemistry of earlier stages is unusual, it should also be documented.
– Documentation of the means used to reproduce the strain by cutting, grafting or tissue culture.
– Details of how the strain was developed (seed and the pollen parents) or if the plant was a chance seedling that was discovered. If the strain is a chance mutation of some other strain, the other (parent) strain should be identified.
– Details known about the parent (for example, what was grown in that field or greenhouse before the seedling was discovered).
The core of the information required to prepare a successful plant patent application relates to the statutory requirement that the strain is stable and distinctive. In particular, proving distinctiveness can be troublesome and requires very careful botanical descriptions, photographic evidence and anatomical/chemical analysis to fulfill technical requirements.
Tom Zuber is the managing partner of Zuber Lawler & Del Duca LLP, a firm of 40 attorneys with offices in California, Illinois and New York. He holds a law degree from Columbia Law School, a master’s degree in public policy from Harvard University and a biomedical engineering degree from Rutgers University, where he graduated with highest honors. He can be reached at tzuber@zuberlaw.com.
Each month the experts at Zuber Lawler & Del Duca will tackle a new topic that is relevant to the marijuana industry, providing valuable information to help cannabis business owners build and grow their business. Zuber Lawler & Del Duca helps cannabis clients with mergers and acquisitions, intellectual property, regulatory compliance and litigation. The November issue of Marijuana Venture will address cannabis branding and trademarks.