By: Taylor Fairchild
It may be surprising, but the answer appears to be a resounding yes.
Conflicts Between State and Federal Law
In November of 2012, the Washington State Legislature successfully passed Initiative 502, which allowed for the use of recreational marijuana in the state. Washington became one of the first states, along with Colorado, to decriminalize recreational marijuana and many states followed suit. Seven years later, 33 states in the country have decriminalized medical marijuana, recreational marijuana, or both. In August of 2013, the United States Department of Justice announced it would not interfere with state level legalization, but required states to strictly regulate the distribution and sale of marijuana.
Regardless of the decriminalization of the use of marijuana at the state-level, the drug remains illegal at a federal level. Currently, marijuana is a Schedule 1 Drug, meaning that according to the government it has no accepted medical use and a high potential for abuse. As recent as 2016, the Department of Justice has declined to reschedule marijuana, which shares the category with heroin, ecstasy, and LSD, among others.
Still, this has not kept even the federal government from patenting certain parts of marijuana. Patent 6,630,507 (The ‘507 patent), which The US Department of Health and Human Services (“HHS”) acquired in 2003, points to using the plant’s “non-psychoactive cannabinoids to protect the brain from damage or degeneration caused by certain diseases, such as cirrhosis.” The ‘507 patent focuses on cannabinoids that do not have psychoactive effects, specifically cannabidiol (“CBD”). CBD is not the active chemical in marijuana, which is likely how the government has avoided the Schedule classification language and been able to consistently enforce the law. Technically, the government has not patented the drug marijuana, but instead the use of a secondary chemical present in the plant.
Current Trends in Patenting Marijuana
The ‘507 patent, among others, seems to open the door on patenting marijuana. Even before state-level legalization of cannabis, pot patents have been quietly issued by the United States Patent and Trademark Office (“USPTO”) since at least 2000. The has commented specifically on the viability of marijuana related trademarks, saying, it “may inquire about your compliance with federal law before issuing a registration [and] [i]f your goods, services, or trademark violate federal law, [it] will issue a refusal.” However, the USPTO has remained silent on their policy for cannabis related patents and seems to be fine with issuing patents on the plant itself, as well as many applications of its components.
During 2012 there was a sharp uptick in the patent protection of marijuana. A study by Clarivate Analytics, “Money in the Pot: The Impact of Deregulation on Cannabinoids Innovation” suggests that patented uses of cannabinoids have become exceedingly more recreational in nature. Pre-2012, data suggests that patents on pot were almost exclusively medicinal.
Marijuana Patents in Court
Currently, about 3,000 patents on marijuana are active today. They range in subject matter from marijuana infused beverages, methods of hydrogenating cannabis oils, and notably, a liquid with a high CBD concentration for therapeutic use.
That patent became the center of the first marijuana related patent infringement case in the United States. In UCANN v. Pure Hemp, a case which is currently making its way through the Colorado District Court, The United Cannabis Corporation (“UCANN”) sued Pure Hemp Collective for allegedly infringing its patent. The patent at issue covers virtually all liquids with a concentration of 95% or higher of cannabinoids that contain one or more terpene or flavonoid. To the shock of many following the case, UCANN’s patent survived the summary judgment stage with the court ruling that the patent was not invalid. This decision suggests that cannabis extracts are patent eligible subject matter, and likely other cannabis products are as well. The court will now decide whether this patent is novel, useful, and non-obvious, applying these legal tests like any other patent in front of the court.
Even after overcoming the huge hurdle of patent eligibility, some issues still remain when it comes to litigating marijuana patents and actually protecting marijuana related IP. For example, because there is a dearth of scholarly writing on the therapeutic and recreational uses of cannabinoids, there is a chance that the patent office may grant patents on strains of marijuana that have been technically in ‘public use’ for many years. Further, in order to secure plant patents, you may have to mail parts of the plant to the government for inspection. Mailing marijuana is still a federal crime.
Overall the patenting of marijuana poses a unique set of challenges and legal questions that we are sure to see advancements in the coming years. UCANN v. Pure Hemp will likely be the start of cases litigating the validity of patents on marijuana, and its ultimate ruling is sure to shape the industry in the future.