Via the U.S. Patent Act from 1790, an applicant for a patent, if approved, is granted the sole and exclusive right to make, construct, use and sell to others any useful part, manufacture, device or any improvement thereon not before known or used that he or she registers with the Patent Office.
Patents provide protection from infringement by others on your invention for twenty years. A patent can be protected in court, leading to money damages and/or a license for any future uses of your invention. Licensing fees are a tremendous indirect economic benefit of patents.
Patents are property. Therefore, they can be used to give potential investors in a business you seek to base around your invention that you have a market cornered or can block competitors from entering into your direct market for a significant period of time. Furthermore, a substantial collection of patents can make a company a strong target for acquisition or merger — another potential economic benefit of applying for patents.
US Patent Law recognizes three different types of patents relevant to this discussion. The first is a utility patent which is granted to those who apply to protect a novel invention that is new and useful.
The second is a design patent which can be granted to those who design an original, novel design for an existing invention. Its protections are limited.
The third is a plant patent which can be applied for by someone who invents or discovers a new plant, not found naturally in the wild, to protect that plant and its direct progeny.
The History of the Cannabis Patent and Its Current Legal Status
It’s important to note that, while there is a trend favoring the legalization of cannabis on a state-by-state basis, marijuana and its derivatives are still illegal as a Schedule 1 controlled substance under federal jurisdiction in the United States. However, this does not act as a bar to filing for patents for cannabis-related inventions. The US Patent Office has set a precedent in looking the other way. The only things that are not patentable are human beings and inventions that can only be used in association with atomic weapons. In fact, as an example of this, look toward the medical research into cannabinoids and their effectiveness in treating diseases like Alzheimer’s since around 2003. Patents filed related to that research and variations of the sativa plant have led to significant strides in treating neurodegenerative diseases.
There is legal precedent supporting plant patents. Patent protection is not limited to non-natural inventions. Instead, as long as the invention comes from work that would not have naturally occurred without intervention. This opens the door for wide-reaching cannabis-related patents.
This includes cannabis plants, with variations of them being patented every day. There are two ways to patent a cannabis plant — the more rare type is a plant patent in which a single parent plant is patented so that you control all of its direct descendants. The other type is a utility patent, which has broader protection over any cannabis plant that meets the criteria described in the patent — much more than just the direct descendants of a single parent plant that an applicant patent.
Also Read: Medical and Recreational Marijuana Patents
Interestingly, since the legalization of marijuana and cannabis is a relatively recent occurrence, there is no legal precedent for the legal enforcement of a cannabis patent. Legalization, so far, has been a purely state-by-state process and patents are a federal creature. Therefore, it is not clear at this time, given the status of marijuana and cannabis as schedule 1 controlled substances in the eyes of the federal judiciary, how such a court case would proceed.
Furthermore, seeking to protect your patent in court is a potentially costly measure. It’s often a drug out fight with years of litigation with discovery, document production, the hiring of experts on both sides and lengthy trials and court costs. And while the possibility of protecting your patent is a great reason to go to court, the other side will do everything in their power to potentially invalidate the patent, effectively destroying it and your right to protect your invention. These costs must be considered before pursuing a lawsuit against a patent infringer. However, if you do not enforce a patent, it could potentially lose its effectiveness, to begin with.
The US Patent Office grants patents to those who apply for them related to pharmaceutical uses of cannabis or compounds that are utilized to treat disease or pain. And since twenty-nine states and the District of Columbia have legalized some form of cannabis use, the US Patent Office has even granted patents for inventions that require the possession of cannabis or marijuana — a schedule 1 controlled substance and illegal under federal law. This trend of approving these patents has only increased in parallel with the pattern of legalization in the United States, and that trend appears to be inclined to continue.
There are two main cannabis patents to consider when thinking of applying for a patent:
1) Utility Patent
The key to obtaining a utility patent is novel features. This is how you identify the plant and protect your patent. What specifically can be included in a utility patent for a cannabis plant is: of course, the plant itself and its seeds, but also the methods by which the plant is bred, cultivated and processed. The patent application, by law, must include how to replicate the plant. Most patent applications will then include blueprints or schematics for an invention. This is more difficult with a living thing like a plant. Therefore, the US Patent office has allowed the submission of seeds in an international authority like a seed bank or vault from where other parties can seek samples.
2) Plant Patent
Plant Patents, as referenced before, are less broad in their protections. They pertain only to a specific plant and its direct descendants that are sexually produced. Note that utility patents can also protect plants that are sexually produced and offer broader protections.
First, you’ll need to search the US Patent Office’s database to make sure that your invention or idea has not yet been patented. You need to make sure that your cannabis strain or process is novel, and wasting time and money on an application that will only be denied as duplicative is unnecessary. Furthermore, looking at other patent applications will give you an idea of the information you need and what you should include in order to differentiate your product from your competitors.
Next, find and retain an experienced patent attorney. You’ll need their counsel for the steps in applying for this patent. It’s a very technical matter and someone with more experience than you in getting it through and granted. Then, you have a connection to an attorney if you ever need to enforce your patent.
Now you need to do the foundational work of determining the kind of patent that you are applying for. The general thrust of this information shows that it is likely the most beneficial to apply for a utility patent as it offers the broadest protections. Then, file a provisional application to hold your spot and make sure no one can beat you in a potential patent race where a competitor may discover some strain or product similar to yours and might be racing you to market with it. You may know that this race is occurring; you might not.
Complete your formal application with the assistance of an experienced patent attorney and then find a way to actively participate in the patent process to keep it moving and stay on top of it.
Finally, after your patent is granted, enforce it as needed in order to retain the protections that you wish to hold on to over your invention.
The are multitudes of cannabis patents in the US Patent Office’s database, but the most common that you see there include:
Plants and strains including the methods of cultivating them and the equipment needed to do so;
Methods of processing cannabis plants, including the processing of their active ingredients;
Medical uses of cannabis in the use of treating diseases and pain;
The products of cannabis cultivation such as extracts, oils, food, supplements, cosmetics, beverages, veterinary products, etc.;
What might be most notable about this list and the cannabis patents in the database is how not noteworthy they are. The US Patent Office handles these patents like they do any other, and grants them how they would any other. The invention that an applicant is seeking to patent must be — like any other patent — novel. It must be new, useful and not obvious. And the application itself must provide enough information for someone of ordinary skill and knowledge to replicate it. You cannot patent a cannabis plant that can merely be discovered in the wild. That is not novel, nor is it an invention.
Patent trolls exist and must be avoided. They are individuals and businesses whose sole model is to accumulate patents and to enforce them against all comers, even those who may not be infringing them. They send threatening letters with imposing letterhead and seem very litigious. They just want quick settlements and to make you go away. They hurt small businesses. But there seems to be a trend in the laws and precedent of patent law to take away some of their power, or at least limit it.
The larger danger is the massive conglomerates and monopolies that can be seen as cornering the cannabis market — to take it over with broad patents and economic clout to drive down prices and squash competition. Large companies like Monsanto, GW Pharma, and Biotech Institute have seemed to have sought to do this. What large conglomerates like Monsanto actually want to do is pretty much unknown, but their actions can speak louder than words.
These companies own patents on pharmaceuticals and products from cannabis, but also cannabis strains. Biotech Institute, for instance, holds a variety of patents that, at first glance, appear to be broad in their language describe their strains, but are not broad enough to be considered as monopolizing or cornering the cannabis market. Strains can be so incredibly nuanced that new types could be defended in court – if necessary.
Patents are intricate enough and strains so complicated and varied that no one monopoly or conglomerate could totally corner the market or should be able to scare you off from pursuing a patent of your novel invention. At least for now.
The US Patent Office is accepting applications for novel inventions in the cannabis industry at an increasing pace as the industry grows and more-and-more states legalize marijuana and cannabis — either recreationally or limited only to medical-use. They are accepting both plant and utility patents related to cannabis at an unprecedented pace as the market explodes. We highly recommend that you patent your cannabis strain or product now in order to protect your idea. States are likely to continue to follow the process of legalization. The federal government will have to follow sooner or later. Having your product patented now is the best case scenario for your business and economic livelihood.
The federal government has continued to fail to comment on the patentability of inventions related to what is a schedule 1 controlled substance and illegal at the federal level. While the federal government is doing this, obtaining a patent during this infancy of this growing market is integral to growing your cannabis business. The giants in the cannabis industry are doing what they can now to monopolize the market, but they have not gotten there yet. They will eventually do what they can to crush entrepreneurs and file broader patents in an attempt to box you out. You have to protect yourself and your idea, It could be your livelihood. There will always be room for you and your business to strike out with your nuanced, viable strain of cannabis if you protect yourself now.