By: Erica Paige Fang
As we enter 2017, twenty-eight states have legalized the sale and use of medicinal cannabis, and eight states, including California, have legalized the sale and consumption of recreational cannabis. The cannabis industry is booming with innovation. Typically in a booming industry, individuals and companies turn to the patent system to protect inventions and obtain a legal monopoly for the protection period. However, there are several road bumps cannabis innovators seeking patent protection will encounter.
The United States Patent and Trademark Office (USPTO) will grant patent protection for inventions that are novel and non-obvious. There are three types of patents an inventor can obtain: design, plant, and utility. The length of protection for a design patent is 14 years, while plant and utility patents hold protection for 20 years. The USPTO is a federal office and therefore may not grant protection to innovations involving cannabis because the subject matter violates the Controlled Substance Act. Unlike federal trademark protection, the patent statutes do not facially prohibit the patenting of cannabis plants, and therefore, it is possible the USPTO could issue plant patents for cannabis strains.
Another hurdle cannabis innovators must overcome is the invention disclosure requirement. The disclosure must be sufficient so that another person skilled in the art can replicate the invention. To date, there are patent applications claiming patentable cannabis strains, however, it is unlikely the applications’ disclosures will be sufficient to issue a patent. In the agricultural industry, the scientific data receives heightened scrutiny to ensure the disclosure is thorough and enabling. The cannabis industry has not developed or utilized equipment to collect and quantify the scientific data required to be issued a patent and overcome the disclosure requirement. As the industry matures and develops better technology, or as big agriculture moves into the industry utilizing the scientific instruments already in place, it is likely we will see an influx of cannabis patents.
If a patent is issued for a cannabis strain, or other cannabis related technology, there is still great risk in enforcing such a patent, as it would attract the attention of federal law enforcement. While the industry continues to make giant leaps forward, there is still significant risk involved and obstacles to overcome to obtain intellectual property protection. If there is a federal rescheduling of cannabis, patent attorneys theorize patent infringement claims involving cannabis will come forward.
Innovators in the cannabis industry should keep in mind that a public disclosure of an invention would void any potential patent protection in the future. Sharing, selling or otherwise distributing any part of the unique strain will be considered a public disclosure, including seeds, clones, and flowers.
Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.