The U.S. Patent Market and Marijuana: Where We Are Now and the Need to Create a Record of Prior Art
I’m sure you’re exhausted from all the weed puns in any write up about the rapidly changing cannabis market so, I’ll save you the weed puns in this blog post and get straight to answering your burning (okay, sorry!) questions about the state of cannabis patents in the U.S. today.
Patent granting is a carefully balanced test aimed to both encourage and reward innovation without inhibiting competition. Known as “prior-art” in patent law, the U.S. Patent and Trademark Office typically deny patent applications if the idea is well-known in the public domain.1 The cannabis industry creates a tricky situation, as there is little to no formal documentation of strains and cannabis-related information because of its formally illegal standing.2 Therefore, the Patent Office is left with no option but to grant patents, even if the patent may be too broad.3
The first cannabis patent infringement complaint in the country was filed on July 30, 2018 — and the outcome could have ramifications for the entire industry.4 United Cannabis Corporation filed a suit in Colorado against Pure Hemp Collective, Inc. alleging infringement on U.S. Patent No. 9,730,911 (“the ‘911 patent”).5 The patent claims cannabinoid formulations, including those that contain at least 95% cannabidiol (CBD).6 According to the complaint, the defendant sells products that are identical to the inventions claimed in the ‘911 patent.7 However, the concern is that the ‘911 patent is too broad. According to Neil Juneja of Gleam Law, products that United Cannabis Corporation claims to have infringed on its patents “have been made for two generations” and should not be granted patent rights.8 If the case is decided in favor of United Cannabis Corporation, it would start a trend of overly broad cannabis patents and, therefore, easily monopolize the industry.
In order to prevent corporations from creating a monopoly on cannabis products, industry leaders — or even those simply wanting to contribute — should begin to build a bank of prior art related to cannabis.9 This can include anything from methods of producing cannabis products to strains of marijuana that have been well known for years, even if only in previously illegal markets. A bank of this sort will make it easier for the U.S. Patent Office to recognize patent applications that are not novel or innovative, and, thus, help ensure the cannabis market remains competitive. Next, players in the industry should begin lobbying their state governments for regulation. While marijuana is still a federally restricted drug, lobbying state governments to establish industry regulation will help to create an even playing field within the cannabis market.
For now, we should closely monitor the United Cannabis Corporation case to see where cannabis patents in the U.S. are headed, as the outcome could either legitimize overly broad cannabis related patents, or recognize the lack of prior art in this market but allow the Patent Office to strike down patents based on their breadth.10
Holly L. Johnston, Alex Harry, & Gregory Wesner, The Cannabis Patent War: In the Midst of Chaos, There Is Opportunity, 37 The Licensing J. 15 (2017).↩
Id. at 15.↩
Id. at 15.↩
Tryn Stimart & Jean Dassie, Surveying The Cannabis Patent Litigation Landscape, Law360 (Sept. 17, 2018) https://www-law360-com.fls.idm.oclc.org/articles/1083160/surveying-the-cannabis-patent-litigation-landscape. [https://perma.cc/V9KZ-6C9Z]; see also Cheryl Miller, Why Patent Lawyers Are Watching Colorado Cannabis Case, The Recorder (Aug. 8, 2018) https://www.law.com/therecorder/2018/08/08/why-patent-lawyers-are-watching-this-colorado-cannabis-case/. [https://perma.cc/CR8H-BWSE]↩
United Cannabis Corp. v. Pure Hemp Collective Inc., Case No. 1:18-cv-01922-NYW (D.Colo)↩
Steve Brachmann, Cannabis Extract Patent Assertion Underscores Issue of Limited Prior Art for Marijuana Inventions, IPWatchdog (Aug. 7, 2018) http://www.ipwatchdog.com/2018/08/07/cannabis-patent-assertion-underscores-issue-limited-prior-art-marijuana-inventions/id=99980///. [https://perma.cc/T5E6-SA84]↩
Johnston et al., supra note 1 at 15.↩
Stimart & Dassie, supra note 2.↩