Patents, Cannabis, and the Current U.S. Climate Michael N. Cohen, Esq. Cohen IP Law Group, P.C.

What is a Patent? A patent for an invention is the grant of a property right to the inventor, issued by the USPTO. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed.

The right conferred by the patent grant is “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.

Three Types of Patents 1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; 2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and 3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

History of Cannabis Patents No Legal Impediment to Obtaining Cannabis Related Patents USPTO Has Been Issuing Cannabis Related Patents Since 1942 Since then, over 1,500 cannabis-related patent applications have been filed in the US

DIAMOND v. CHAKRABARTY, (1980) U.S. Supreme Court: “Eligibility for patent protection does not depend on whether the substance is living or non-living, rather, the key question is whether the inventor has altered nature’s handiwork to the extent the resulting invention can be deemed a non-naturally occurring substance.”

U.S. Patent No. 6,630,507 Ironically, in 2003, the U.S. Department of Health obtained a patent for some of the basic work on the medical potential of cannabinoids found within the cannabis sativa plant used to treat neurodegenerative diseases such as Alzheimer’s and Parkinson's.

What is Being Patented? 1) Cannabis compositions, drug formulations, and methods of preparation; 2) characterization of cannabis compounds in terms of how they engage with human endocannabinoid receptors; and 3) methods of treating diseases with cannabinoids.

Current Legal Climate

Cannabis Patents for Plants While cannabis remains a Schedule 1 controlled substance and is illegal under Federal Law, the USPTO has taken a hands off approach in barring cannabis patents from being registered.

What Does This Mean for Patents? Current U.S. Federal Law: Plant Variety Protection Act of 1970 Plant Patent Act of 1930 Patent Act of 1790 Cannabis related inventions and varieties have been patented under all three of these.

Limits On Patents To this day, the only types of inventions that are legally not patentable are: Inventions covering human life forms Inventions whose sole purpose is use in atomic weapons. As long as cannabis patents meet the legal patent standards, USPTO grants registration.

What Types of Patents is the USPTO Granting? Prior to Legalization: USPTO granted patents to pharmacological uses of cannabinoids and related compounds for the treatment of disease. Did not require actual “possession.” Today: Since CO led the way in 2012 to legalization, the USPTO has granted an increasing number of patents to inventions requiring possession of cannabis.

Most Common Cannabis Patents: Cannabis Plants Cannabis Processing Cannabis Products Cannabis Consumption Devices Medical Cannabis Use Detection and Chemical Analysis of Cannabis

Utility Patent Example An example of a cannabis utility patent is U.S. Patent No. 8,906,429, which claims medical lozenges and compositions thereof. See Exhibit 3 in Handout. This is a classic example of a cannabis utility patent recently granted by the USPTO where the invention mentions marijuana outright, evidencing the USPTO’s acceptance of cannabis related patents.

What is Most Notable? USPTO examines cannabis-related patent applications no differently than other applications; Cannabis patents required to meet the same legal standards as other applications; For plants, cannabis patent must in some way be a product of human ingenuity; a plant simply found in the wild is not patentable.

Benefits in Obtaining a Patent Highly beneficial and recommended for any business owner, venture capitalist, or to register ones patents with the USPTO. Puts competitors on notice, reassures investors your business, ideas, and technology is protected, and gives you the right to take legal action against those infringing on your inventions. A strong patent portfolio makes a business a more attractive target for acquisition.

Concerns of Monopolization Monsanto GW Pharma Biotech Institute LLC

Steps to Register Your Patent Search the USPTO to ensure your idea is new. Find an experienced Patent Attorney. Determine what type of patent your invention requires (utility, design, plant). File a provisional patent application. Gather information for your formal application. Complete formal application w. Attorney. Actively participate in the patent process.

Conclusion USPTO is accepting cannabis related patents at an increasing pace Both through utility and plant applications. It is highly recommended to obtain your cannabis patents now, as states move towards legalization with the Federal Government likely to follow. Little actual evidence that large companies are “cornering” the market, and due to the intricacies of patents and cannabis strains, there will always be plenty of room in the market for new business to stake a claim.

Michael N. Cohen mcohen@cohenip.com Cohen IP Law Group, P.C. 9025 Wilshire Blvd., Suite 301 Beverly Hills, CA 90211 Tel. (310) 288-4500