The legality of cannabis in the United States is a complicated and confusing topic. State laws say one thing and the federal laws say something different, laws conflict and businesses continue to seek clarity in murky waters. Cannabis business owners do their best to remain as compliant as possible with evolving regulations, and they must find a way to build their reputation and protect their inventions along the way.
Due to cannabis’s federal illegality, many of the common tools used by businesses are unavailable to those in the cannabis industry. For example, registering a trademark with the United States Patent and Trademark Office (USPTO) - a common way for protecting a brand in the United States - is impossible for businesses directly involved with the cannabis plant. Why? Because trademarks are only available to those who legally sell their goods or provide their services across state lines, and cross-state cannabis sales are federally illegal (click here to learn more about protecting cannabis brands). Fortunately, the USPTO is a bit more relaxed when it comes to patent protection, and, as a result, many cannabis-related patent applications have been filed and granted over the years.
Why Do I Need a Patent?
A patent is an extremely valuable business asset - a USPTO-granted patent gives the patent owner the exclusive right to make, use, or sell the invention claimed in the patent throughout the United States. This exclusivity can last for up to twenty years (depending on the type of patent granted), giving businesses an opportunity to profit greatly from the sale or licensing of their invention. If you have a patentable invention, receiving a patent gives you a limited monopoly and a huge leg up in the U.S. market.
Why Does the USPTO Grant Cannabis Patents and Not Trademarks?
To register a trademark with the USPTO, the trademark must first be used in interstate commerce. In other words, business must be conducted across state lines, and, more importantly, the type of business conducted must be legal. Since it is federally illegal to sell or even transport cannabis products from one state to another, cannabis trademark users cannot meet the interstate commerce requirement and, therefore, cannot register their cannabis trademarks.
Patents are granted according to a different set of requirements. As long as an invention is novel, non-obvious, and useful, it is eligible for patent protection. Many years ago, whether an invention was "useful" did depend on whether its use was legal or not. Over time, however, the courts have loosened up, and now nearly any use - legal or illegal - is enough to meet the usefulness requirement. As a result, cannabis inventions are no different than any other type of invention when it comes to patent protection in the United States.
What Types of Cannabis Patents Are Available?
A utility patent is what most people think of when they hear the word "patent." Utility patents protect inventions that have some, well . . . utility. In the cannabis space, utility patents can be used to protect consumer goods such as vaporizers and grinders, new types of rolling papers, chemical compositions, industrial processing equipment such as extraction or texting machines, and even business processes.
Utility Patent Term:
20 years (from the patent application filing date)
Utility Patent Requirements:
2) Novelty; and
Utility Patent Categories:
Compositions of Matter (mixtures/chemical compounds)
Cannabis Utility Patent Applications:
Consumer goods, commercial machines, chemical compounds, etc.
Sample Cannabis Utility Patents -
US 6,328,992 -
CANNABINOID PATCH AND METHOD FOR CANNABIS TRANSDERMAL DELIVERY
US 8,906,429 -
MEDICAL CANNABIS LOZENGES AND COMPOSITIONS THEREOF
US 9,220,294 -
METHODS AND DEVICES USING CANNABIS VAPORIZERS
Unlike utility patents, design patents protect the appearance or ornamentally of an item (rather than their usefulness). Design patents can be used to prevent others from making, using or selling similar looking products. This is especially useful for protecting product or packaging designs.
Design Patent Term:
15 years (from the date of grant)
Design Patent Requirements:
2) Novelty; and
Cannabis Design Patent Applications:
Product Designs (e.g., vaporizer appearance, container shapes)
Sample Cannabis Design Patents -
USD 788,364 - DRY HERB VAPORIZER
Plant patents protect exactly what you'd expect - plants, but not just any plant you come across walking through a forest. Plant patents are granted on distinct and new varieties of plants that are either invented or discovered and then asexually reproduced (a lot to process, I know). As long as a cannabis plant meets all of the plant patent requirements, the USPTO is willing to grant patent protection.
Plant Patent Term:
20 years (from filing date)
Plant Patent Requirements:
New and distinct;
Invented or discovered; and
Sample Cannabis Plant Patents -
US PP27,475 - CANNABIS PLANT NAMED “ECUADORIAN SATIVA"
Click here to contact Verhagen Bennett LLP for more information about cannabis patents or for help filing your cannabis patent applications.