Considering that patent law in the United States lies exclusively under the purview of the federal government, and that marijuana has been illegal at the federal level since at least the passage of the Controlled Substances Act in 1970, it would not be unreasonable to assume that cannabis-related patents are verboten. This assumption, as logical as it may be, is (thankfully) dead wrong.
To the contrary, cannabis-related patents are fair game in the U.S., where patent applications for cannabis-related inventions are received and examined by the U.S. Patent and Trademark Office in the same manner as non-cannabis inventions. Thus, innovative cannabis companies should not disregard patent protection for their inventions, especially when the industry is growing at such a breakneck pace.
A patent is a form of intellectual property (IP) that provides its owner with the legal right to exclude others from making, using, selling and importing an invention for a finite period of time, in exchange for fully disclosing the invention to the public. Patents play a vital role in all walks of life, and they are so integral to the U.S. economy and general entrepreneurial spirit that the Founding Fathers included patents in Article I, Section 8 of the Constitution.
Types of Patents
In the United States, there are three types of patents: utility patents, design patents and plant patents. Each can provide avenues for a cannabis company to protect its innovations while enhancing the value of its IP assets.
The most common type of patent — the utility patent — covers any new and useful process, machine, article of manufacture or composition of matter; or any new and useful improvement thereof. A utility patent could potentially protect a wide range of cannabis-related inventions such as devices for using cannabis, THC/CBD extraction techniques and machinery, chemical compositions of cannabis products and so on. Utility patents are arguably the strongest form of patent protection. The term for protection is generally 20 years from the filing date of the patent application.
(Warning: While this 20-year term is a helpful rule-of-thumb, calculating the actual term for a granted U.S. patent can be tricky.)
Design patents protect new, original and ornamental designs for an article of manufacture — in laypersons’ terms, the unique look of a product. In the cannabis industry, design patents could potentially protect a company’s packaging, a unique look for a vaporizer, cartridge, tincture or other device for using cannabis and so forth. Design patents have a 15-year term from their issue date, and the application process is generally less expensive, compared to utility patents.
A plant patent may be granted to someone who has invented or discovered — and asexually reproduced (such as by cuttings, grafting and budding) — a distinct and new variety of plant, other than a tuber-propagated plant or a plant found in an uncultivated state. A patented plant must differ from known, related plants by at least one distinguishing characteristic, which must be more than a difference caused by growing conditions or fertility levels, for example. A plant patent could be a valuable asset for a cannabis company, potentially protecting a newly created strain of marijuana, such as one with unique THC/CBD levels or unique effects. The term of a plant patent is 20 years from the date of filing the application. A plant patent protects the inventor’s right to exclude others from asexually reproducing, selling or using the plant so reproduced.
Under U.S. law, the basic requirements for a patent include that the invention: falls within patent-eligible subject matter (for example, it cannot be naturally occurring); has a utility (a fairly easy threshold to meet); is new (that no single prior art reference teaches every element of the invention); and is non-obvious (meaning the invention is more than an obvious combination of prior art references readily and easily combined using routine skill).
In the U.S., a prior art reference can include public disclosures/publications of the invention by the inventor, if they are more than one year before the filing date of the patent application. In many international jurisdictions, any disclosure of the invention before the filing of a patent application creates an absolute bar from obtaining patent protection. This is why it is almost always advantageous to maintain the secrecy of a potential patentable invention before filing a patent application.
Often, overcoming prior art rejections by a patent examiner — in other words, an accusation that the subject matter of a patent application is known or obvious — is the biggest challenge in securing a granted patent.
Specific Issues for Cannabis-Related Patents
While cannabis companies should not discount patent protection for their innovations, they should be aware of some nuances within the U.S. patent system when attempting to safeguard their innovations.
Arguably, the biggest issues for cannabis-related patents stem from a lack of proper documentation of prior art. That is, because prior art typically includes previous patents or publications, and because cannabis was illegal in most contexts throughout the United States until recently, a plethora of prior art cannabis technology has never been officially documented.
Another issue for cannabis-related patents is the uncertainty in enforceability within federal courts that have exclusive jurisdiction to hear patent infringement cases, although recent caselaw suggests that this will be less of an issue than previously feared.
Lastly, a lesser-discussed issue arises from the cannabis culture itself; until recently, cannabis was mostly associated with a fairly open-source, laissez-faire culture.
As the cannabis industry grows, companies must adapt to the challenges arising from that growth, including exploiting any available competitive advantages. Patents can provide one such competitive advantage, perhaps the strongest competitive advantage achievable — obtaining a limited monopoly for certain inventions.
Thus, if a company believes it is innovating in the cannabis industry, it is highly recommended that they consult with a patent attorney early and often, to help protect those innovations.
Thomas J. Bassolino is a patent attorney and the founder of Bass Patent Law, LLC, which is located in Frederick, Maryland and serves clients worldwide. He can be reached at firstname.lastname@example.org.
Thomas J. Moyer also contributed to this article. He is an intern at Bass Patent Law, LLC and a student at Loyola University. The views expressed in this article are the personal views of the authors and do not necessarily reflect those of Bass Patent Law, LLC or its clients.