Design Patents for Cannabis Intellectual Property


With the start of a new year and a new decade, Illinois has become the 11th state to legalize recreational marijuana use, with many other states likely to follow suit. As a result of this recent legalization, cannabis companies operating in Illinois will seek to protect their technologies and brands. However, as cannabis is still considered an illegal substance at the federal level, the cannabis industry continues to face unique challenges when it comes to protecting intellectual property.

Many companies in the cannabis industry are looking to utility patents, trade secrets, trademarks and copyrights to protect their technologies and brands. Yet one form of protection, design patents, remains largely unused. Indeed, recent research revealed that the United States Patent and Trademark Office (“USPTO”) had issued only 14 design patents specifically related to cannabis. Nonetheless, design patents can be a potentially powerful source of intellectual property protection that cannabis companies should consider.

Design patents

Design patents protect new, non-functional and ornamental aspects of a product; in other words, design patents cover the uniqueness of a product rather than its function. If a product has a new and unique design (i.e. unique twists, grooves, ridges, etc.) that is not dictated by function, then design patents may be a viable option. for protection that may complement the functional characteristics protectable by utility patents. Where applicable, design patents provide a number of key benefits, for example:

  • Design patents provide 15 years of protection. The term of a US design patent is 15 years from issuance (35 USC § 173). This 15-year term allows the owner to build a solid reputation for their design, which may eventually lead to a protectable commercial dress in the future. The 15-year term also means that no matter how long the application process takes, the applicant will have rights to the design for 15 years after the design patent has been filed. allowed. This is an advantage over utility patents, which offer protection for 20 years from the date of filing. deposit, which reduces the applicant’s time for exclusive review if the application process takes many years. Additionally, the practice of continuation allows for the protection of related but distinctly patentable designs, which can be an important part of a long-term business strategy for building a unique product design portfolio.

  • Design patents provide strong exclusive rights. Design patents prevent others from using the design during the life of the patent. This gives the owner of the design patent 15 years to exclusively use the design. Design patents also provide protection at the federal level and do not conflict with federal controlled substances laws. This means that while some states have not legalized the use of marijuana, design patents will be protected and enforced at the federal level. And, an infringer of a patented design may be compelled to return all of his or her profits upon the successful application of the design patent (s) (35 USC § 289).

  • Design patents are inexpensive to maintain. No maintenance fees are due on design patents, making them less expensive to maintain than utility patents, which require maintenance fees at three different times during the life of the patents.

  • Design patents involve a less expensive application process. Since a design patent consists of only one claim, the initial costs of preparing the application are generally lower than those of preparing a utility patent application. Additionally, design patent applications historically have a higher allocation rate than utility patent applications, often helping applicants avoid an ongoing battle with the USPTO. Design patents are also reviewed faster on average than utility patents, typically resulting in review and clearance within 12-18 months.

  • Design patents can provide a head start on trademark and trade dress protection. A well-controlled design patent can help establish exclusivity in product and / or packaging configurations that can be recognized as source identifiers and therefore subject to common law trademark / trade dress protection. , as well as potentially registrable rights.

Take away food

Cannabis companies that manufacture ancillary products should consider obtaining design patents. Design patents can be used to protect the unique shape of vaporizers, pipes, bongs, tinctures, containers, and products that include new designs featuring cannabis leaves or thematically similar design elements, which the one of these products is used or not with or for cannabis. Design patents are also optimal for aftermarket parts where owners expect the replacement part to reflect the original.

© 2021 Brinks Gilson Lione. All rights reserved. Revue nationale de droit, volume X, number 45


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