The year 2020 saw the increasing acceptance of cannabis in the United States, as indicated by legalization in five other states, proposed federal legalization, and the designation of cannabis (if applicable) as essential during the coronavirus pandemic. The recent United Nations decision reclassification cannabis signals similar changes globally. As a result of these changes, cannabis “cultivation” has grown into a $ 14 billion business. industry in the United States where the benefits of federal laws, including bankruptcy and trademark protections, have at times been uncertain. The benefits of US patent laws, however, are widely available to innovators, and as demonstrated in 2020, that includes plant patents on cannabis.
Plant patents vs. utility patents for plants
Plant patents are different from utility patents. Utility patents are granted to anyone who invents or discovers a new and useful process, machine, article of manufacture or composition of matter. Plant patents are granted to anyone who invents or discovers and reproduces asexually any distinct and new variety of plant. Plant patents were traditionally granted on useful sports that could be propagated by cloning, such as an early flowering fruit tree or a new color rose.
Plant patents offer much closer protection than utility patents. A utility patent gives its owner the right to prevent anyone in the United States from making, using, selling, offering to sell, or importing the claimed invention. A plant patent gives its owner similar rights, but only for clone of the patented plant. In other words, a plant patent does not cover plants grown from seeds of the patented mother plant.
As is generally the case, patents on cannabis plants have been much less common than patents on the utility of cannabis. Fewer than 50 cannabis plant patent applications have been published, while thousands of cannabis-related utility patent applications have been published – including patent applications on methods of extracting oils, cultivation of plants, vaporization of plant products and treatment of diseases with plants or formulations, as well as particular extract compositions (e.g. powders, lozenges, creams) and food preparations, such as cannabis and whey powder.
As of summer 2019, only three (3) plant patents had been granted on cannabis plants. The first cannabis plant patent was 27,475 PP to Ecuadorian Sativa, issued just four years ago on December 20, 2016 to Steven Kubby. The second cannabis plant patent was 30,434 PP to LW-BB1. It was issued on April 23, 2019 and is now owned by Green Brands LLC. A third cannabis plant patent, PP30 668 to DD-CT-BR5, issued shortly after July 9, 2019, and now owned by Cannagen LLC.
Also in the summer of 2019, a hemp plant patent 30,639 PP to CW2A was awarded to Joel Stanley on popular Charlotte’s Web strain was used to treat a severe form of childhood epilepsy. It is owned by CWB Holdings, Inc. Hemp plants are in the genus Cannabis, but by definition, they contain less than 0.3% of the psychoactive compound tetrahydrocannabinol (THC).
In 2020, nine (9) additional cannabis plant patents were issued. Eight of these patents were filed by Biotech Institute, LLC, reported earlier this year. The patents of the Biotech Institute are: PP31,535 to Lemon crush OG, PP31,707 to Grape lollipop, PP31,724 to Primo Cherry, PP31 752 to Cake dough cookies, PP31 874 to Sacred crunch, PP31.917 to Raspberry Punch, PP31.918 to Rainbow gummeez, and PP32 473 to Bihemp 050924. The ninth of these patents is PP32 318 to MR2017002, and is owned by Aurora Cannabis Enterprises, Inc.
Cannabis plant patent requirements
Additional patent applications on the cannabis plant have been filed and some remain pending. Many of them were rejected, however, because they did not meet the requirements of the patent office, and many had to be abandoned because the issues could not be resolved. Disclosure requirements for plant patents are supposed to be relaxed compared to utility patents, but patent examiners demand considerable detail for patents on cannabis plants.
For example, a plant patent application must include a detailed botanical description of the plant, including the characteristics that distinguish it from already existing plants. The application must also specify how and where the plant was propagated asexually. Cannabis plant patent examiners require technical details of how it is propagated, clear identification of the place of propagation, and scientific descriptions of how the reported levels of THC and CBD were determined.
Reviewers are also particularly attentive to the name of the plant. By law, a U.S. plant patent constitutes a registration under the International Union for the Protection of New Varieties of Plants (UPOV), provided that it includes a name for the plant variety. Some of the patents issued on cannabis plants have colorful names and some do not. If another party has a trademark on the proposed variety name, the examiner can reject the application and require that the name be changed.
To take with
It may be possible in certain situations to obtain a utility patent which covers cannabis plants as defined by certain characteristics, in particular genotypic characteristics. The twelve cannabis plant patents issued to date, however, confirm that it is now possible to patent a distinctive cannabis mother plant, provided the application is properly prepared. As we look to 2021, we expect to see more patents on cannabis plants.
Â© Copyright 2021 Squire Patton Boggs (US) LLPRevue nationale de droit, volume XI, number 2