Intellectual property is commonly understood in the cannabis community as being synonymous with trademarks. But IP encompasses much more than logos and taglines. It also includes patents, trade secrets, and copyrights. For companies creating unique formulations and for hemp and marijuana plant breeders, the options for IP can play an important role in your overarching business strategy.
You might think that because cannabis – particularly high-THC marijuana – is federally illegal, the U.S. Patent and Trademark Office (USPTO) cannot issue patents for strains of cannabis. But this is not the case. Unlike for trademarks, the legality of an invention is irrelevant to patentability. There are many issued patents on cannabis strains as well as pending patent applications currently before the USPTO.
Back in March, we sat down with Hoban Law Group IP counsel, Cathleen Rocco on The Hoban Minute to discuss the options cannabis operators have to protect their intellectual property, the risks CBD manufacturers take on who don’t patent their formulations, and whether or not high-THC cannabis varieties are able to be patented through Plant Variety Protection (PVP).
Cannabis Patents and Trademarks
Cathleen, who has spent the last 15 years helping inventors capture patent and trademark rights, navigate intellectual property risks, craft IP strategy and build a robust patent portfolio, points out that there’s a lot of misunderstanding in the cannabis industry with respect to IP.
When it comes to high-THC cannabis strains, Cathleen points out that it’s not the job of the USPTO to police what’s legal and what isn’t. With this in mind, she highlights that in light of the fact that we are seeing such a drastic and dramatic push towards protecting all forms of IP in the cannabis industry, it’s very important for cannabusiness owners to think in terms about their business goals and the place of their products in the market, to determine what makes the most sense for them in term of intellectual property protection. If your business is technology-driven, you need to be thinking in terms of securing patent protection as there is no other way to ensure that you can prevent others from making, using, selling your invention. Cathleen strongly encourages cannabis entrepreneurs to file patent applications.
While investing in IP can be potentially expensive, patents are business assets that inure to the bottom line of your company’s valuation. They also provide leverage when negotiating prices during licensing negotiations. and can be a revenue driver when they are out-licensed or sold. This is why it’s very important to have the help of a licensed patent attorney who is experienced in drafting and prosecuting patents and with developing a business-driven patent strategy. They can help you decide what makes sense for your business and increase the likelihood of obtaining broad patent claims.
Recently, the Hoban Law Group was involved in an incredibly important IP case, as it was the first case in federal court in which a patent holder seeks to enforce a patent concerning cannabis-related inventions. In young industries, patent claims tend to be very broad. This was certainly the case for this particular matter. As the industry matures, patentability will narrow as a result of the prior art (i.e., searchable public disclosures, including scientific literature, pending patent applications, and issued patents that examiners must consider in order to determine whether an invention meets the criteria for patentability) becoming more crowded.
What about Plant Variety Protection (PVP) for industrial hemp?
For decades, European plant breeders have been using PVP and abiding by the rules of the International Union for the Protection of New Varieties of Plants (UPOV). With the recent re-emergence of industrial hemp in the U.S., it’s important to think about how American hemp breeders will use PVP. Much of this work will be done in terms of identifying varieties that have a number of advantageous and superior traits including growing characteristics, microclimate suitability, high yields, and lignin content, just to name a few. We have a very strong agriculture industry here in the United States and I have every confidence that hemp breeders and cultivators will quickly “catch up” to the innovation we’ve seen in Europe.
It is a critical time for operators in the cannabis industry to have a crash course in patent law. With so many innovations and new technologies being developed in the space, there is a great need for patent protection. While many inventions are patentable, you must be proactive in order to get ahead. The HLG IP team is a wealth of knowledge and can help you get a leg up in this respect. Gone are the days we stopped to decide where we should go, we just ride.