Posted on

How to Read a Cannabis Patent

554-cover-page.jpg

Previous posts have discussed cannabis patents, here, and here, and here. Today I explain the basics of how to read a patent. Why would you want to do such a thing? If you are in the cannabis business, you may own a patent, or be threatened of infringing one. The tips below will give you a good start on understanding what a patent means.

Today I focus on utility patents, which are about 90% of all patents. (The other major category is design patents.) Utility patents can cover such things as cannabis plants, or methods of making cannabis plants. Utility patents have four basic parts: introductory material, drawings, the specification, and the claims. To read and understand a patent, you should be be familiar with each of them.patent marijuana cannabisUnsurprisingly, the introductory material is at the beginning of the patent (shown above). It starts out with the patent number, the date the patent was issued, the inventor(s), and the assignee — if there is one. It also provides the filing date of the patent, which is usually several years before the issue date. The next important part is the “references cited,” a list of prior art that the patent examiner looked at. There is also a short “abstract,” a sort of summary of the invention, often followed one or two pictures of the invention. While the abstract and the opening pictures can give a good idea of what is to come, they do not define the invention. More on that later.

Next are a series of stylized line drawings or charts. While making patent figures is an art, the figures are not intended to be artistic. Rather, they are there to help the reader understand what the invention is, and perhaps how it is used. Like the abstract, the figures do not define the invention. In fact, some of the figures may not refer to the invention at all.

Following the figures is one or more pages of text in 8 point type, set out in two columns separated by a narrow column of numbers. This is generally referred to as the “specification,” or “spec” (although technically the specification also includes the figures and the claims). The specification usually gives the background of the invention, a summary of the invention, often a brief description of the drawings, and then a “detailed description of the invention.” This sets out the nitty gritty technical details of the patent, usually making reference to the various drawings by number. Although the specification gives this detailed description, once again, it does not define the invention.

Finally, tucked away at the very back of the patent, shyly hiding behind the specification, are one or more patent claims. The claims are numbered, and always start with “What is claimed” or “I claim” or “we claim” or similar language. What, you may ask, do these puny claims do? Well, they define what has been invented, that is, what is covered by the patent. They are the equivalent of the deed to your house, which describes, in somewhat technical terms, exactly where your property begins and ends.

So how do you make sense of all of this? I suggest that you start with the introductory material. Then turn to the claims. Keep in mind that in order to infringe a patent claim, whatever is accused of infringing must have every single thing listed in the claims.  If the claim is for a hybrid cannabis plant, which produces a female flower comprising CBD content of >3% and a terpene profile of alpha phellandrene, a plant that has only 2% CBD won’t infringe.

Next, look at the drawings and the specification. I usually print out an extra copy of the drawings and have them open when I read them. Once you have done that, you can go back to the claims with a better understanding. Often, claims only contain part of what is in the specification. But the claims are the key to knowing what the patent is about.

Most importantly, have fun! You could be reading the tax code.

 

Posted on

Cannabis Litigation Part 4: Intellectual Property Ownership Agreements

Tableta_con_trillo.png

cannabis marijuana intellectual property
It can be tough to decipher who owns your cannabis business IP, if you don’t write it down.

An important question for any cannabis business is: who owns the company’s intellectual property (IP)? The easy way to answer this question is to work it out before any dispute. The much, much harder way is to litigate. As noted in a famous oil filter commercial, “You can pay me a little now. Or you can pay him a lot later!”

The two most common situations where IP ownership disputes arise in a marijuana business are between the owners of a company, and between the company and its employees. Here are some tips on how to handle each situation.

IP ownership in an entity: IP is a capital asset of a cannabis company, and like all other capital assets, e.g., grow equipment, real property, office furniture, software, etc., should be owned by the cannabis company itself, as provided in the entity operating agreement. Issues can occur, however, when the entity wants to use IP that is already owned by a member/owner of the entity.

In particular, many operating agreements provide that a member contributes her IP as initial capital. There is nothing wrong with this, in theory. Intellectual property, like real property or other assets, can be contributed as capital provided that the operating agreement properly values and accounts for the asset. But problems can occur when the operating agreement does not legally transfer title in the IP to the entity. In such a situation, the “contribution” may be more like a license, which can be revoked. If the contributed IP is the primary brand name of the company, this could give the contributing shareholder undue leverage if she wants to withdraw from the entity after the company has built equity in the brand name. A significant number of operating agreements do not properly transfer title to the trademarks, copyrights, or patents that are being contributed. Without the appropriate transfer, this is a time bomb waiting to explode, in a courtroom near you.

IP ownership of employee creations: The conventional wisdom is that everything that is created by a company’s workers automatically belongs to the company as “work for hire.” While there is a federal copyright statute that refers to works for hire, the rules are much narrower than conventional wisdom suggests. This often causes conflicts between employers and employees about patents and copyrights, which in turn lead to litigation.

There is an easy way to avoid the work-for-hire minefield, called an employee IP agreement (“EIA”). An EIA is a written agreement that defines which creations are the employee’s, and which are the employer’s. For example, where a new employee has already created IP before her employment, the EIA could provide that the employee retains title to all disclosed preexisting IP, but is required to assign any future IP created in the scope of her work to the employer. EIAs also often address creations done outside of the workplace or outside of the scope of employment, and may provide for invention bonuses or other incentives. The key is that the EIA allows the parties to define their ownership of worker creations, without having to rely on the limited default rules that exist in federal and some state law.

***

IP ownership agreements: don’t leave the dispensary without one! For parts 1 – 3 of this series, check out the following:

Posted on

California Cannabis Trademarks: The “Legal Use In Commerce” Debate

ecommerce-1992280_960_720-320x240.png

california cannabis trademark
In California, trademark use comes before registration.

It was big news for California cannabis business owners when the California Secretary of State’s office announced that it would be accepting applications for cannabis-related trademarks under limited circumstances. Until January 1st, one of the biggest hurdles for California cannabis brand owners had been the inability to secure California state trademark registrations for their marks. But we are still receiving a lot of questions from clients regarding whether they are actually eligible for those registrations, particularly when they have not yet received their temporary or full license from the state, or even when they are not yet operating.

As we’ve discussed before, one of the key requirements for obtaining a California state trademark registration (or a federal trademark registration, for that matter) is that you must be making lawful use of the mark in commerce at the time of your application. For any state trademark application, this means you must be making lawful use of your mark in commerce within that state. This requirement has created a good deal of difficulty for those seeking to enter into cross-state brand licensing deals, but it’s also creating some confusion here in California, where it isn’t always clear what “legal use” of a mark entails.

The California Secretary of State’s office has indicated that it will accept trademark applications for goods and/or services that fit within an existing classification code from the USPTO’s Identification of Goods and Services Manual. While it will be easy to register for things that fit squarely within the USPTO specifications, like retail services, registering for cannabis products themselves will prove less clear cut. So every application must specify goods and/or services that the applicant is actually selling, and the sale of those goods and/or services must be legal under state law. Note that mere token sales of goods or services are insufficient to support trademark registration.

To sort through the requirements for a successful state trademark application, it’s useful to go back to the basics of legal trademark use under federal law.

One of the key considerations in any trademark application is that it doesn’t matter how clever the wording of your specification of goods and services is, if you aren’t actually selling goods or services that comply with the relevant law. For example, under federal law, calling your goods “dried herbs,” “dried plant matter,” or “agricultural goods” will not fool the examining attorney if what you are actually selling is cannabis.

How this will play out at the state level, however, is less clear, where the sale of cannabis is now legal for those with a state license (we are intentionally taking a conservative position on this, as a trademark registration that is open to challenge and cancellation down the line could end up doing an applicant more harm than good). As under federal trademark law, you must actually be selling the goods you specify in your application, and the goods you are selling must comport with state law. The Secretary of State’s office has taken a rather ambiguous position here, but we think it’s the best they could do given the lack of legislation amending California’s trademark law. Until the state establishes a specific class under which businesses can register their marks for cannabis products, we expect to see trademark applications with intentionally vague specifications of goods and services, which won’t benefit anyone, including trademark owners.

And remember that this determination does nothing to increase your odds of obtaining a federal trademark, even though the state has deemed your use “lawful.” An applicant must have a bona fide intent to use their marks lawfully (under federal law) in commerce under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127.

Note that even an application filed on an intent-to-use basis could be rejected if the record indicates that the identified goods or services are unlawful, because actual lawful use in commerce is not possible. Many applicants have tried and failed to make an argument that because they sold goods only in states that allow for the legal sale of cannabis, their current and intended use therefore constitutes lawful use in commerce under the Trademark Act. The USPTO has repeatedly rejected this argument, citing a decision that “the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.” In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016). In other words, the federal interdiction against cannabis will control over state law cannabis legalization.

The takeaway here is that lawful use in commerce will be key to obtaining a California State trademark registration that will hold up in court, and provide you with adequate brand protection. It’s better to hold off on filing your trademark application until you are certain you meet all the legal requirements under trademark law, than to rush and file an application that could be subject to cancellation. We cannot stress enough the importance of engaging with an experienced trademark attorney to ensure that your application is viable before you file.

Posted on

California Cannabis: Trademarks Available January 1st

7673987996_c09e060959_b-320x232.jpg


California Pot Trademarks: It’s a Race.

Things are about to get a little easier for marijuana companies looking to protect their brands in California, where obtaining a state trademark for cannabis goods and services has not been possible, to date. Beginning January 1, 2018, however, all of that changes. Customers may register cannabis-related trademarks or service marks with the California Secretary of State’s Office, so long as the following requirements are met:

  1. The mark is lawfully in use in commerce within California; and
  2. The specification matches the classification of goods and services adopted by the United States Patent and Trademark Office.

The Secretary of State’s Office has reiterated that they will only accept applications insofar as the goods and/or services in question fit within an existing classification code from the USPTO’s Identification of Goods and Services Manual. Therefore, it will be easy to register for things that fit squarely within the USPTO specifications, like retail services. Cannabis goods could be more problematic, although we have already begun to develop strategies to protect these as well.

The other key to obtaining a California state trademark registration is that you must be making lawful use of the mark in California state commerce at the time of your application. This means that you must be licensed by the state to provide the goods and services for which you are seeking protection, and you must have made your first sale of those goods or services as well. Unlike the USPTO and some states that allow for trademark “reservations,” California does not have an intent-to-use trademark application, and so you must make use of your mark prior to obtaining protection. In that sense, it’s a race.

We have received a lot of inquiries from clients interested in applying for trademarks on January 1st, but few will actually be eligible on day one. On this point, it is important to note that if you file a trademark application before you’ve made use of your mark, that application could be subject to cancellation down the line. It would also be unhelpful in the event you end up in trademark litigation. The flip side here is that “squatters” who plan to register illegitimate marks on January 1st will fail, or will be open to cancellation without any bona fide use.

When combined with federal trademark registrations for ancillary goods and services, this development in California state trademark policy will be key in bolstering brand protection for licensed cannabis businesses. We are glad to see California finally join, Oregon, Washington and other cannabis program states that allow entrepreneurs to protect their valuable intellectual property.

Posted on

Cannabis IP Licensing 101

Cannabis IP licensingGiven the recent influx of cannabis-IP licensing deals on which we have worked, I thought it important to discuss some of the issues potential licensees often face when negotiating with brand owners.

These licensing deals are complicated and fraught with unique cannabis-related issues. Many companies come to us with such licensing deals expecting the biggest hurdle to be state cannabis law compliance. And though this is certainly a major concern, it’s important to start with the fundamentals by analyzing the validity and strength of the intellectual property itself. With any licensing deal, the first step should be determining who actually owns what intellectual property. This is especially true when it comes to the cannabis industry, where information, strain names, and industry terminology have been shared freely since long before state-level legalization.

Ownership of IP in the cannabis industry is a tricky issue, in large part because the USPTO will not issue federal trademark registrations for cannabis-related marks. Far too regularly, cannabis companies come to us with proposed licensing deals where basic due diligence quickly reveals the licensor simply does not own what it claims to own. A little bit of high-level IP due diligence can save a lot of money.

If you are looking to get a license for another company’s IP, here are the most basic questions you should be able to answer about that other company and its IP:

  • Does the licensor own any federal trademark registrations?
  • If so, what goods and/or services do those trademark registrations cover?
  • Was the description of goods and/or services filed with the USPTO accurate and true? Were there possible misrepresentations?
  • Are the trademark registrations based on actual use, or upon an “intent-to-use?”
  • What representations and warranties is the licensor making (or, often more importantly, not making) regarding the marks?
  • If the licensor doesn’t own any federal trademark registrations, is it licensing someone else’s trademarks?
  • Does the licensor have a master licensing agreement? Do the terms of any proposed sub-licensing agreement mirror that master licensing agreement?
  • What quality control standards will you be held to by the trademark owner?
  • Has the trademark owner warranted to keep all USPTO filings up-to-date?
  • Does the licensor own any state trademark registrations?
  • If so, has the licensor made lawful use of its mark in commerce in the state of registration?
  • Does the licensor have any common law trademark rights? Can the licensor even legally acquire common law trademark rights in your jurisdiction?

This is a substantial list, but it only scratches the surface of the issues you and your cannabis IP counsel must consider before you enter into any IP licensing deal. Cannabis companies are often too quick to skip straight to negotiating commercial terms for a deal, without ever assessing whether the rights they are licensing actually exist. Just like with any other type of property — like a house or a car — a licensor of intellectual property must actually own the rights to that property to be able to confer all or some portion of those rights to another party. Seems basic, but it’s truly shocking to see the deals we’ve seen put together by attorneys who either do not know cannabis or, more often than not, do not know the intricacies (or even the basics) of intellectual property law.

Of course, even after you resolve the fundamental IP issues, you still must resolve the state cannabis law issues. In California, for example, even state trademarks are still not available for cannabis and cannabis products. And we don’t yet know how the soon-to-be-released MAUCRSA draft regulations will impact our options for commercial terms and structuring of licensing deals.

Fortunately, the news isn’t all bad. Though these licensing deals are complicated, there are creative and effective solutions to all of these problems, but those take a firm understanding of both IP and state marijuana laws from the outset.

Posted on

Yet ANOTHER Cannabis Trademark Infringement Case: Tapatio Foods Files Suit

Cannabis Brand names
Choose your cannabis brand name wisely

If this feels like déjà vu (all over again), it’s probably because earlier this month, I wrote about The Gorilla Glue Company’s lawsuit for trademark infringement against GG Stains LLC out of Nevada. In that case, Gorilla Glue, the manufacturer of a variety of adhesives sold under the “Gorilla” brand and distinctive logo, alleged trademark infringement, dilution, unfair competition, and cybersquatting against GG Strains, which marketed one of its popular strains under the name “Gorilla Glue.” The allegation was that by marketing its cannabis strains under “confusingly similar” names, GG Strains was trading off the goodwill and reputation established by Gorilla Glue over the course of 23 years. The parties ultimately settled the dispute a few weeks ago, and GG Strains will have to cease using the Gorilla Glue marks.

Now, we have another allegation of trademark infringement by Tapatio Foods LLC, the famous American hot sauce brand. Tapatio has filed two separate complaints against TCG Industries, LLC (d/b/a Payaso Grow), alleging federal trademark infringement, federal and state unfair competition, and dilution. Sound familiar? TCG has a cannabis-infused hot sauce called “Trapatio” that bears an image of a “man in [a] sombrero, yellow shirt, and red tie” that is (according to Tapatio) “confusingly similar” to Tapatio’s trademarked images.

For ease of reference, here are several past blog posts relating to trademark infringement, and how to choose a brand that won’t get you sued:

And here are the factors a court will consider in assessing whether one mark is likely to be confused with another, proving trademark infringement (AMF Inc. v. Sleekcraft Boats):

  • Strength of the mark;
  • Proximity of the goods;
  • Similarity of the marks;
  • Evidence of actual confusion;
  • Marketing channels used;
  • Type of goods and degree of care likely to be exercised by the purchaser;
  • Defendant’s intent in selecting the mark; and
  • Likelihood of expansion of the product lines.

The two most basic factors I recommend our cannabis clients evaluate before they select a brand are 1) is your mark similar to or the same as an existing mark, and 2) Are you intentionally “riffing” off an existing brand? Remember that parody is not a defense to trademark infringement that will typically fly in a commercial setting. When you choose a mark as a “parody” of an existing brand, chances are you’re actually infringing a registered trademark, and possibly diluting a famous mark. And the fact that you knew of the senior trademark would absolutely play against you in litigation, as your infringement would be deemed willful.

Of course, these two factors are only the beginning of the analysis. There are instances where similar, or even the same brand names can coexist if the goods those brands are used on are completely different and marketed through separate channels to disparate groups of consumers. The analysis for likelihood of confusion can be quite complex.

Before adopting a new brand name, we recommend consulting with an experienced trademark attorney and we also recommend having them perform a trademark clearance search to ensure your brand won’t be infringing any existing registrations. This recent flood of cannabis trademark litigation is only an indication of what’s to come as the cannabis industry continues to grow.

Posted on

Cannabis Trademarks: How to Coexist with Large Hairy Primates

Living-with-a-gorilla.jpg

Cannabis trademark litigation
Can they live together?

A recent post here looked at the “Gorilla Glue” trademark dispute between a cannabis business and a glue maker. As we’ve often seen, the cannabis business gave up its brand, rather than litigating. Sometimes a settlement is the best choice. When the cannabis business is the smaller, newer, less financially-sound company, facing an established brand holder with more resources for litigation, it may be smart for the cannabis business to spend its money on rebranding rather than on litigation. But settlement is not the only option when a cannabis business uses a mark similar to the mark used by a non-cannabis business.

Imagine a hypothetical business, “Naturewave Furniture, Inc.” (“NFurn”). NFurn has been selling furniture for 25 years throughout the United States to consumers who want environmentally-friendly products. In 1995, NFurn federally registered “Naturewave” in international trademark class 20, “furniture.” Though NFurn is a player in the enviro-friendly products market, it is not a household name. Now imagine Naturewave Cannabis, LLP (“NCanna”), an Oregon cannabis producer that also sells branded rolling papers. In June 2016, NCanna registered “Naturewave” with the Oregon Secretary of State under class 131, “agricultural products,” and class 134, “tobacco & smokers articles.”

NFurn sues NCanna in federal court, alleging 1) NCanna’s use of Naturewave infringes on its trademark because confusion with NFurn’s Naturewave® mark is likely, and 2) NCanna’s use of Naturewave® to sell cannabis and rolling papers is diluting or tarnishing its mark. But NCanna has invested heavily in marketing its cannabis products and accessories under the Naturewave name, and its Naturewave cannabis products are popular and profitable. Does NCanna have good defenses to either claim? You bet it does.

The basic question for trademark infringement is whether consumers would mistake the source of the goods. Here, the goods offered by each party—furniture and cannabis—are unrelated. No stores sell both furniture and cannabis and the marketing channels for these two products do not overlap. The customers for both goods are sophisticated, careful shoppers. People looking for enviro-furniture usually spend at least 10 hours before buying a particular item. Cannabis consumers are known for research that borders on the obsessive, as shown by the proliferation of sites like MassRoots, Leafly, and Fresh Toast. Neither company is going to move into the other’s product line. Though NCanna had heard of Naturewave Furniture, the words “nature” and “wave” have different connotations in the different industries. NCanna isn’t branding itself as environmentally friendly, and NFurn isn’t suggesting its furniture will let the buyer “ride a wave.” It is unlikely a customer would think NFurn is the source of the cannabis sold by NCanna, or that one of NCanna’s customers would walk into a natural furniture store looking to buy cannabis.

The claim for tarnishment requires a different analysis. Under trademark law, the owner of a famous trademark can sue for using its mark in a way that dilutes or tarnishes the mark. There is no need to show a likelihood of confusion in a tarnishment claim; you only need to show that your mark is famous and similar to the accused mark. Although it is easier to list famous trademarks—Coke®, Amazon®, Google®, Starbucks®, Xerox®—than it is to define “famous,” generally a highly distinctive mark that is very well-known throughout the market, and has been used extensively and continuously for a long time, can be found to be famous. NFurn argues that NCanna’s use of Naturewave® with a traditionally illegal product will tarnish or dilute its mark. But is Naturewave® “famous” under trademark law? Arguably not, at least on our hypothetical facts. In that case, NFurn would not have a claim for dilution.

The upshot of this imagined case is that NCanna could evaluate NFurn’s lawsuit and know it had solid arguments to defend the case. The strength of the litigation position is, however, only one factor. Ultimately, whether to litigate a trademark dispute or settle or seek a coexistence agreement is a business decision for the cannabis company.

Related posts:

 

 

Posted on

What NOT to do with your Cannabis Brand: The Gorilla Glue Trademark Infringement Dispute

Dot_not_touch-2-320x320.png

Cannabis trademarksThe Gorilla Glue Company and GG Strains LLC, a Nevada-based cannabis company, entered a recent settlement agreement in the trademark infringement case brought by Gorilla Glue back in March. This case provided a perfect illustration of what NOT to do when developing your cannabis brand, and it now illustrates the possible consequences of infringing the trademarks of a well-established company.

In its complaint, Gorilla Glue, the manufacturer of a variety of adhesives sold under the “Gorilla” brand and distinctive logo, alleged trademark infringement, dilution, unfair competition, and cybersquatting. The allegation was that by marketing their strains under “confusingly similar” names, GG Strains was trading off the goodwill and reputation established by Gorilla Glue over the course of 23 years.

The trademark infringement in this case appears to have been flagrant – GG Strains utilized a logo for its “Gorilla Glue #4” strain that incorporated a gorilla, and certainly conjured an association in the minds of consumers with the famous adhesive brand. But though this case involved a pretty flagrant example of trademark infringement – after all, the infringing word mark was exactly the same as the registered Gorilla Glue mark – the standard for infringement is actually significantly lower. Not only can you not use a mark that is the same as a registered trademark, you cannot use a mark that is confusingly similar to a registered trademark.

We’ve written before about the standard for assessing likelihood of confusion, but it warrants repeating. The Ninth Circuit (which sets the law on this for Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon, and Washington) in AMF Inc. v. Sleekcraft Boats, developed an eight-factor test for determining whether one mark is confusingly similar to another. Here are those eight factors:

  1. Strength of the mark;
  2. Proximity of the goods;
  3. Similarity of the marks;
  4. Evidence of actual confusion;
  5. Marketing channels used;
  6. Type of goods and the degree of care likely to be exercised by the purchaser;
  7. Defendant’s intent in selecting the mark; and
  8. Likelihood of expansion of the product lines.

Some of these factors are clear-cut, and some are highly subjective. The Ninth Circuit has repeatedly reaffirmed that this is a flexible test, but it is useful to consider these factors when choosing a name for your brand that may be similar to another registered mark. For example, if the other, similar mark is a well-known brand, or a household name, your risk of infringement goes up. If the goods you are selling are similar to the goods provided by the other brand, your risk goes up. Likewise, if the marks are very similar, if similar marketing channels are used, or if either company intends to expand into the market of the other, your risk of infringement goes up. You’ll notice that the court also considers the intent of the defendant. This means that if you knew from the outset that your mark was similar to a registered mark, the court is less likely to look favorably on your case.

In the Gorilla Glue case, the intent of the defendant would likely have been a factor weighing heavily in favor of the plaintiff. It would have been tough for GG Strains to make a case that they weren’t intentionally referencing and playing off of the brand of the well-known adhesive company.

And the consequences for GG Strains’ branding choices were serious. The settlement agreement gives GG Strains twelve months to cease using the word “Gorilla,” an image of a gorilla, or any of the “Gorilla” trademarks. After December 18th of this year, GG Strains can only use their current “Gorilla” marks preceded by a new name, together with the phrase “formerly known as.” Affiliated companies, dispensaries, cultivators and other partners must stop using the word “gorilla,” or any Gorilla Glue trademarks or imagery, and licensees of the strain have ninety days from September 19, 2017 to cease use of the gorilla word, images or trademarks.

The founder of GG Strains estimates that the dispute and rebranding costs have totaled around $250,000. And the costs would have been astronomically higher had the case proceeded to litigation. This should serve as a lesson to cannabis business owners that your brands will be treated no differently than those in any other industry. Big brand owners are taking note of what cannabis businesses are doing, and they are not hesitating to enforce their trademark rights against cannabis brands in court.

Posted on

Do Cannabis Patents Create Monopolies?

antimonopoly-e1505947557335.jpg

Cannabis patentsOur previous post in this series discussed the legal sources for cannabis patent rights. This post and later posts will address some questions about what patents could mean for the cannabis industry.

Today’s question is: Do cannabis patents create monopolies?

Today’s short answer is: Yes and No, but probably less than you might think.

A patent is a government-created monopoly, giving the patent holder an exclusive right to make, use and sell the patented invention. A patentee doesn’t have to let anyone else use her patent (there is no mandatory licensing in the United States), or even use the patent herself. Once the patent expires, it belongs to the public forever. Though the law abhors a monopoly, patents are an exception. The theory is that granting inventors a few years of exclusivity encourages the creation of products beneficial to society.

A patent is not an unlimited monopoly, however. To start, a patent is only good for a limited time, usually about 20 years from the patent filing date. Since it can take three or more years to get a patent granted, that often means a patent lasts 17 years or less in the real world. Patents cannot be renewed; once the patent expires, anyone can practice it at no cost.  Compared with trademarks, which could have indefinite terms, or copyrights, some of which can last as long as a century, the patent term is short.

Also, only inventions that are new and not obvious can be patented. If something has been publicly used or on sale for at least a year, it’s probably unpatentable by anyone. The legal meaning of “obvious” is different and more complicated than the dictionary definition. For our purposes, if a claimed invention could be readily made by a skilled person who was familiar with the prior art, it is obvious. These two requirements of novelty and nonobviousness are intended to ensure that the patent system narrowly rewards creators, not merely collectors or aggregators of products to which the public already has access.

Perhaps most importantly, a patent’s coverage is often much narrower than it appears. You can consider a patent to be like a real estate deed. The deed for your house may refer to the property at “1st and Main,” but that doesn’t mean you own everything at that address. Your actual property lines are set out in the deed’s legal description, e.g., by detailed surveying designations. Similarly, the scope of a patent is limited by the claim or claims, which are found in the last part of the patent following the words “I claim” or “What is claimed.” Here is a hypothetical cannabis utility patent claim, based on an issued patent:

What is claimed is:

1) A cannabis plant that produces a flower comprising:

[a] a terpene profile where myrcene is not the dominant terpene;
{b] a terpene profile defined as terpinolene, alpha phelladrene, and myrcene;
[c] a terpene oil content greater than 1.5%; and
[d] a CDB content of less than 3%.

Properly interpreting a patent claim is a notoriously squirrely activity. Even if you understand the technical features of the claim, there is an entire body of often-conflicting law on claim interpretation. But one principle is paramount in determining the scope of a claim: the patent covers only inventions that have each characteristic, known in patent law as an “element,” set out in the claim. If a plant had elements [a], [c] and [d], but did not have terpinolene in its terpene profile as required by element [d], it would not infringe that patent.

Our next post will consider more issues about patents and their effects in the cannabis industry.

Posted on

Hashish Patents: The 101

US_Patent_cover-550x816.jpg

Cannabis patents
Hashish patents

In hashish mental property (IP) regulation, as in most areas of hashish regulation, separating the flowers from the weeds is troublesome. There’s loads of misinformation out there on the web and elsewhere about whether or not pot is protectable beneath patent or comparable legal guidelines, and what patentability means for the business.

This submit provides an summary of IP safety probably obtainable for hashish strains and associated crops. Beneath U.S. federal regulation, new plant varieties may be protected beneath the Plant Selection Safety Act (PVPA), as a plant patent underneath the Plant Patent Act (PPA), or as a utility patent beneath the Patent Act. Plant varieties may be commerce secrets and techniques or topic to contractual (licensing) safety.

PVPA: The Plant Selection Safety Act protects sexually reproduced (by seed) or tuber-propagated plant varieties, apart from fungi or micro organism. The statute, which is run by the Division of Agriculture, often supplies 20 years of almost-exclusive rights after the date on which the plant selection is licensed. A spread for which PVPA certification is sought have to be new, which is analogous to the novelty requirement underneath the Patent Act. The variability should even be distinct, uniform, and secure, accordingly to USDA laws. A certificates holder might pursue civil infringement cures in courtroom.

PPA: The Plant Patent Act protects asexually reproduced (e.g., by cuttings, grafting and budding) plant varieties, which aren’t tubers. For PPA safety, the Patent and Trademark Workplace requires that a selection be new, nonobvious, and have some de minimus utility, amongst different issues. These necessities are widespread to all U.S. patents, and are the topic of in depth statutory and case regulation interpretation. As well as, a patented plant should differ from recognized crops by at the very least one distinguishing attribute which is greater than that brought on by totally different rising circumstances or fertility. A plant patent is restricted to at least one genome of the plant, so that mutations or hybrids wouldn’t be coated within the patent, however can be individually patentable. Plant patents expire 20 years after the submitting date of the appliance for the patent. A patentee might pursue civil infringement cures in courtroom.

Patent Act: Utility patents underneath non-Plant Patent Act regulation could be granted for crops, seeds, plant varieties, plant elements (e.g., fruit and flowers), and processes of manufacturing crops, plant genes, and hybrids. As with different patents, a spread sought to be patented have to be new, nonobvious, and have some utility, amongst different issues. Civil infringement cures can be found in courtroom.

Commerce secrets and techniques/licensing: Although commerce secret safety may be obtainable to plant varieties, the power of a talented individual to independently reproduce the variability in query might get rid of any protectable secret. Some breeders have sought to guard plant varieties by licensing contracts that purport to restrict the use or distribution of the variability. Typically referred to as “bag-tag” or “seed-bag” licenses, these are usually coated by state regulation.

The PVPA, the PPA, and the Patent Act all present unique rights for 20 years, which might be enforced in courtroom. The PVPA and the PPA differ primarily relying on whether or not the plant is sexually (PVPA) or asexually (PPA) reproduced. Utility patents might have extra stringent necessities for purposes than plant patents, however usually supply broader protections than plant patents. Particularly, whereas a plant patent has solely a single declare that defines the scope of the patent, a utility patent can have a number of claims, every addressing totally different elements of the plant or methods of utilizing the plant which are disclosed within the specification of the patent. Additionally, utility patents can be found for each sexually and asexually reproducing crops.

IP safety for hashish crops was theoretical, however this modified lately. Within the final two years, the PTO has issued plant patents, e.g., U.S. PP27475 P2 (Hashish Plant Named ‘Ecuadorian Sativa’), and utility patents, e.g., U.S. 9,095,554 (Breeding, Manufacturing, Processing, and Use of Specialty Hashish). Within the subsequent installment of the Hashish Patent Primer, I’ll talk about what hashish patents imply to the hashish business and attempt to dispel a few of the patent myths widespread to the business.