By: Yixin Bao
Technology impacts almost every industry, and the cannabis industry is no exception. There are multitudes of cannabis patents granted by the United States Patent and Trademark Office (“USPTO”) each year, including the technology to process and cultivate cannabis plants, and the medical uses of cannabis in the treatment of diseases. As states continue to legalize cannabis, the dispute about whether a federal court should apply the illegality doctrine to cannabis-related patents would become more prevalent in the future.
Traditionally, USPTO does not prohibit the filing of patents related to cannabis. In fact, the number of cannabis-related patent filings continues to increase in recent years. The explanation for this increase seems to be related to the more advanced technologies resulting in the rising medical and recreational use of cannabis and a trend favoring the legalization of cannabis on a state-by-state level. 21 states have acted to legalize recreational marijuana, and even more states have legalized the medical use of marijuana. Nevertheless, in most circumstances, at the federal level, marijuana and marijuana-related products are still considered illegal. Because the legalization of cannabis and marijuana is a relatively recent occurrence, unsurprisingly there has been limited cannabis patent litigation in legal history.
With the expectation of increased patent litigation over cannabis patents, the question then becomes whether the illegality doctrine should apply to cannabis patents in a federal court, where marijuana and cannabis are schedule 1 controlled substances under the Controlled Substances Act in the eyes of the federal judiciary. The idea of the illegality doctrine comes from Everet v. Williams, also known as “the Highwayman’s case,” a 1725 case in an English court. The court refused to uphold a lawsuit regarding the enforceability of contracts, which was to share the spoils of the armed robber. “No court will lend its aid to a man who founds his cause of action upon an immoral or an illegal act.” Lord Mansfield spoke so. The illegality doctrine is based on the belief that a person shouldn’t be able to benefit from his or her wrongdoing.
This question of whether the illegality doctrine should apply to cannabis patents in a federal court has already been raised more often in the legal profession. For example, according to several Goodwin Procter LLP attorneys, including Rob Cerwinski, Brett Schuman, Daniel Mello, and Nikhil Sethi, the uptick in cannabis-related patenting activities in recent years might lead to a potential cannabis patent “war.” These attorneys argue that a federal court should not apply the doctrine because these patents are not the fruit of a crime. There is a big difference between the private agreement between the two criminals in the Highwayman’s case and the patent owners’ rights granted by the USPTO. For example, many cannabis patent holders are pharmaceutical companies and research institutions, instead of criminals. Even the U.S. government holds a cannabis patent. The U.S. Department of Health and Human Services has a patent on certain parts of the marijuana, the non-psychoactive cannabinoids, for their potential use to protect the brain from damage by certain diseases. These holders’ businesses are legal, where the illegality doctrine should not be applied.
A second reason that the illegality doctrine should not be applied is that patent rights themselves do not violate federal drug laws. Patent rights are the rights to exclude others from making or using the invention, which is again, different from the rights to grant owners to make or sell the invention.
Last but not least, if a federal court decides to apply the illegality doctrine to the cannabis patents, it will be in direct conflict with an agency that serves as the national patent office and trademark registration authority for the United States, USPTO.
While marijuana stays illegal under federal law, a large majority of the public seems to favor federal legalization of recreational and medical marijuana according to a CBC News poll published in 2022. As the technologies grow, the public shows support, and states continue to legalize cannabis, this dispute about whether a federal court should apply the doctrine to these patents could become more prevalent.