Getting a patent for a cannabis product is no more difficult than getting a patent for any other kind of product. However, with a high number of cannabis patent applications being approved, it is likely that many will be challenged for invalidation in the coming years.
Already one of these patents has gone to court in the U.S. District Court for the District of Colorado. In United Cannabis v. Pure Hemp Collective, United Cannabis Corp. claims that Pure Hemp Collective Inc. used a cannabis extract that United Cannabis had a patent on. Pure Hemp filed a motion for partial summary judgment, arguing United Cannabis should not have had a patent on the extract because it was something that occurred naturally. In April, U.S. District Judge William Martinez found the strain was altered and would not have occurred naturally and denied the motion for partial summary judgment. The case is still pending.
Daniel Pereira, a partner at Oblon, McClelland, Maier & Neustadt in Alexandria, Virginia, said the United Cannabis case is the first of its kind.
Pereira said the rules for getting a patent on a cannabis product are the same as those for any other kind of product.
“If you took the plant and made an extract and have a bucket of extract that you’re trying to sell, that probably won’t be patent eligible,” Pereira said. “In this case, United took the extract and purified it, which was not naturally occurring.”
If United Cannabis prevails in the case, Pereira said he would expect there to be several new patents for cannabis products filed and would also expect similar court cases to be filed. That would then create precedent of a federal judge enforcing a patent for a product that is illegal at the federal level.
“If you’re not getting the patent and someone else does, you can be stopped at some point in your product line,” Pereira said.
Vincent Capuano, a partner at Duane Morris in Boston, said there is no restriction on getting a federal patent on a cannabis product and now everyone who is in the cannabis industry should be considering getting a federal patent on their products.
“There is a very robust and active situation with patents,” Capuano said. “It is a land grab for territory.”
However, there is no specific precedent for patent examiners to go by when considering approving or denying a cannabis patent application, Capuano said. He explained many of the patents being approved are being done so by junior examiners and those that may not be up to muster but still get approved may be invalidated in the coming years.
“Some patents are skating by,” Capuano said.
Education is key for those who want to apply for a cannabis patent. The first thing to understand, Capuano said, is it is not illegal to patent a cannabis product even though it is illegal for a company to trademark a cannabis product. He said in-house counsel and those who seek a patent on a cannabis-related product should also pay attention to all of the patents that are approved so they are not accidentally copying something that already has a patent.
“It’s something I think a lot of cannabis companies think about but don’t really pay attention to,” Capuano said.