The Possibility Of Marijuana Plant Patents
Patents may soon be joining state-law trademarks, copyrights, and trade secrets, as an effective way to protect cannabis intellectual property.
Like all good businesspeople, those in the cannabis industry are interested in both boosting their brands and in protecting their trademarks. There is, however, one big impediment to these things: federal registration for trademarks on marijuana goods is generally not possible. This means state trademark registration is usually the only option for most cannabis trademarks.
The reason for the federal trademark prohibition is two-fold: Trademark registration requires lawful use of the mark in commerce, and Section 2(a) of the Lanham Act bars registration for an “immoral, deceptive, or scandalous matter.” Since cannabis remains illegal under federal drug laws, “lawful use of the mark” is impossible. On top of this, the U.S. Patent and Trademark Office (USPTO) has made clear that because marijuana is illegal under federal law, marijuana trademarks constitute an immoral or scandalous matter.
But what about pot patents?
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Though cannabis patents are not without complications, federal patent law does not have the same “immorality” standard as federal trademark law, and inventors theoretically can secure patents for illegal products. So can you patent a cannabis strain, and if so, what exactly would you be patenting and what rights would come with that?
The USPTO will grant plant patents to those who invent or discover and asexually reproduce a distinct and new variety of plant. The patent is good for 20 years from the date of filing the application. Functionally, patents are exclusionary rights. They exist for a limited amount of time so that inventors have time to make money off their invention before others are able to copy that invention and undersell the inventor. We want to incentivize inventions so we grant inventors a limited monopoly.
So, it isn’t illogical to imagine that the USPTO can grant patents for cannabis strains. In fact, there are multiple marijuana patent applications already in the hopper, like this one and this one. The USPTO can (and does) take years to actually issue a patent, so it appears that all of the modern cannabis-based plant variety applications are in the pre-grant phase — meaning the USPTO has not actually issued the patent yet. This has not stopped some companies from sending letters to startup cannabis businesses claiming that certain patents have been issued and demanding a licensing fee, but as far as we can tell, none of them are far enough along in the patenting process to grant exclusionary rights to anyone.
If these cannabis patents issue, what protection will these patents afford their owners? The names of the plants themselves are not patented, but their genetics are. If I create a new strain and call it “Ned Stark Thunderdome” and get a patent for it, I would not be able to stop someone in a state where I did not have trademark rights to Ned Stark Thunderdome from using that name for a different marijuana strain. However, I would be able to use my patent to stop someone in all 50 states from selling my specific genetic product under any name. If I wanted to have exclusionary rights regarding the name itself, I would need to obtain trademark protection in as many states as possible, which, unlike patents, requires that I actually be doing business with that name in each state in which I want protection.
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Questions around marijuana patents loom large as legalization continues on a state-by-state basis. The pending cannabis patent applications must meet the standard patent requirements of utility, novelty, and non-obviousness. Getting a patent is difficult and the majority of applications fail due to errors in the applications themselves. Nevertheless, the fact that it takes so long to get a patent may actually bode well for those in the marijuana industry who have already applied. By the time these applications are actually reviewed, we may be in a more favorable political climate and the USPTO will have no desire to stand in their way.
Ultimately, patents may soon be joining state-law trademarks, copyrights, and trade secrets, as an effective way to protect cannabis intellectual property.
Hilary Bricken is an attorney at Harris Moure, PLLC in Seattle and she chairs the firm’s Canna Law Group. Her practice consists of representing marijuana businesses of all sizes in multiple states on matters relating to licensing, corporate formation and contracts, commercial litigation, and intellectual property. Named one of the 100 most influential people in the cannabis industry in 2014, Hilary is also lead editor of the Canna Law Blog. You can reach her by email at [email protected].
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