Patently Strategic Podcast: Protecting Cannabis Patents

As more and more states relax restrictions on both medical and recreational uses of marijuana and hemp, the U.S. cannabis industry is projected to reach $50 billion in sales this year and over $74.6 billion by 2032. This rapid growth is occurring despite immense challenges posed by a complex and conflicting web of legal disparities between federal and state laws. These legal challenges include limited access to financial institutions and the inability to transport products across state lines, but what about patents? THC – the primary psychoactive compound in cannabis – was deemed a Schedule I drug under the Controlled Substances Act of 1970. This is the most restrictive category for drugs in the eyes of the federal government. And unlike most other property rights, patents fall squarely within federal jurisdiction. So, what does this mean for inventors in the space hoping to protect their cannabis-related innovations?

Guest Host: James Gourley

For the answer, we turned to the expert in the space. There have only been five or so cannabis patent infringement cases ever filed in the United States, and our guest host today has worked on two of them. James Gourley is a partner at Carstens, Allen & Gourley, LLP, and a registered patent attorney with the United States Patent and Trademark Office (USPTO). James has a background in chemical engineering and has been a pioneer in the budding space of cannabis IP law, bringing incredible depth of expertise to our conversation, based on firsthand experience.

Cutting Through the Haze of the IP Landscape

In today’s episode, James helps us cut through the haze of the IP legal landscape of cannabis in the U.S., at a time when some states have legalized it to varying degrees while others still haven’t – and at the same time, while cannabis remains federally illegal as a highly restricted Schedule I drug. Despite the obvious contradiction, the U.S. Patent and Trademark Office happily issues federally granted patents on cannabis-related inventions. In fact – and here’s the kicker – even the Department of Health and Human Services holds a patent on using cannabinoids as antioxidants and neuroprotectants. This is the same federal agency whose findings around “no accepted medical benefit” are partially responsible for the Schedule I classification.

But if that weren’t enough to leave you feeling dazed and confused, it gets more complicated when you consider enforcing your cannabis patent rights. Federal Courts have refused to get involved in resolving disputes that would essentially condone illegal activity. The illegality doctrine implies that if you’re involved in financial transactions with somebody who’s violating the Controlled Substances Act and you’re trying to facilitate that, you’re guilty of money laundering – to little surprise, courts want no involvement in such cases. Depending on how you’ve crafted your claims, you may have a very difficult time asserting your federally obtained rights in a federal courtroom!

Episode Overview: Getting High on Innovation

To help make sense of all of this and so that your IP rights don’t just go up in smoke, James and the panel discuss:

• Cannabis at the molecular level, specifically THC and CBD, and how the subtle differences underscore the complexity of cannabis legality.
• The present legal framework around cannabis and the challenges that come via a patchwork of conflicting state and federal laws.
• Cannabis IP issues surrounding obtaining and asserting both patents and trademarks, including insights from the cases James has personally litigated.
• Patent prosecution strategies to help ensure your rights are enforceable in a federal court.

Key Takeaways

It’s potentially risky business to file patents in this space because assertion may be difficult, but given the fluidity of the situation and the long-term nature of patent rights, you need to strike a balance between the short and long game. The panel concluded the following:

• Prior art awareness. Searching is a must since there is likely to be a fair amount of prior art out there, especially for compositions.
• ?Test for strain novelty. For new strains and plant patents, getting biochemical testing done is critical. Since there are many different strains out there, you want to have data to prove that you actually have a new strain (even though present enforcement might be impossible).
• Breadth for legal aspects. Draft in such a way that the application is inclusive of legal aspects, in addition to any illegal aspects that might be part of it. The claims probably shouldn’t mention THC unless part of a dependent claim you’re less likely to assert.
• Selective trademarking. ?File state trademarks in legalized states and avoid the USPTO, except for ancillary products that would be considered federally legal.

Discussion Panel

James leads this “blunt” conversation with our always exceptional group of IP experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP

Mossoff Minute: Six New Anti-Patent Bills

In this month’s Mossoff Minute, Professor Adam Mossoff discusses six – that’s right, SIX – new anti-patent bills that the Senate Judiciary Committee recently advanced despite being backed by bogus data. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:

• Predictable Results from Unpredictable Arts. ?The higher disclosure bar for chemical and biological inventions.
• Brand Protection with Mallory King. Protecting your brand with copyrights and trademarks.
• Opportunities for Cannabis (Marijuana) Plant Patents. An exploration of patentable subject matter in the Cannabis Plant Space.