Although cannabis is still illegal at a federal level, a majority of states in the U.S have now legalized it for either recreational or medical use. Illegality of cannabis being illegal has not stopped the United States Patent and Trademark Office (“USPTO”) from issuing patents on related to the plant, as the USPTO has been issuing cannabis-related patents since 1942. Nevertheless, research shows that as a result of the dichotomy between the Drug Enforcement Administration (“DEA”) and the USPTO, inventors may be timid when it comes to applying for patent protection when cannabis is involved.
Cannabis Patents vs. Cannabis Trademarks
Although the USPTO allows patent protection for cannabis-related formulations and products, trademark registrations are still not allowed. The DEA still has cannabis as a schedule I status under the Controlled Substances Act, which is problematic as the USPTO does not allow the registration of any mark that is an illegal substance. Although the patent and trademark offices of USPTO share a building, they gain their power from different parts of the Constitution. The power to grant patents comes from Article 1, Section 8, Clause 8 of the Constitution, while the power to grant trademark registrations comes from Article 1, Section 8, Clause 3 of the Commerce Clause. In addition, the requirements to obtain a patent and a trademark registration also differ. A trademark requires actual use of the mark in commerce, while patents simply require the invention to be new, useful, and non-obvious, but does not require any actual use.
Cannabis-Related Patents in Recent Years
As of late 2018, the USPTO has issued approximately 40 patents containing the word “cannabis” or “marijuana” in their summaries. The number has increased from approximately 30 in 2017 and 15 in 2016. Interestingly, one of the oldest, issued patents mentioning cannabis was issued to the U.S. Department of Health and Human Services (“HHS”) covering a therapeutic formulation of cannabis for the treatment of diseases. This means that the HHS recognizes some therapeutic value in treating patients with cannabis, while the DEA propounds that cannabis has no medical benefit.
Obtaining a patent on a cannabis-containing invention is only one step in business. A patent that serves as a roadblock to many companies will likely have its validity challenged in court. How well these patents hold up remains to be seen. Notably, the first patent infringement litigation concerning cannabis was filed on July 30, 2018 in the District of Colorado. The plaintiff, United Cannabis Corporation, alleged that Pure Hemp Collective infringed their patented liquid formulations containing highly enriched extracts of plant cannabis.
What seems to be the main issue is whether the patent claims may be overly broad, and, thereby, rendering it obvious in light of the prior art. Experimenting on cannabis has a long history. Many pharmaceutical companies, with expertise in chemistry, discovered and understood what cannabis’ main compounds are, how to extract them, and how to make them. However, an important factor that can assist cannabis patent holders is the lack of documented previous research. Because cannabis had been illegal in the vast majority of countries for a long time, publishing research on it could expose companies and individuals to criminal prosecution. This fear has created a massive lack of prior art documentation for cannabis. Therefore, those seeking to invalidate a cannabis-related patent might only have common knowledge and information, which might not be enough to invalidate such patent in a court of law or at the patent office.
Some argue that so long as cannabis remains illegal, patent validity of cannabis patents will not really be put to the test because many will abstain from challenging potentially infringing patents in the fear of drawing attention to their illegal activities.
Interested parties will await what the result of United Cannabis Corporation’s patent infringement suit to determine how to proceed. The result of the Colorado litigation will help settle fears and confusion in the patent field about scope of protection and validity of cannabis patents.
At Rao DeBoer Osterrieder, our goal is to help you understand complex aspects of IP as they apply to your business. As intellectual property strategies vary greatly between industries or even businesses, it is our aim to learn your business goals and function as an in-house IP attorney would for you. There are a number of strategies even after a patent is allowed that can help increase your bottom line.
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© 2018 Jorge Zamora
The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.
 U.S 6,630,507
 The patent in litigation is U.S. 9,730,911.