When I first wrote about cannabis patents and trademarks in Cannabis Business Times back in 2016, I noted how Colorado legalizing adult-use cannabis made it “safer to attempt to approach the United States Patent and Trademark Office (USPTO) and file for trademarks.”
The office was immediately overrun with applications, overwhelming staff and ultimately forcing the USPTO to rescind any granted cannabis-related trademarks and cease accepting all new applications. A similar deluge is likely in store for these patent reviewers as federal authorities work through the details of rescheduling cannabis to a Schedule III substance from a Schedule I one.
Despite the growing history supporting the validity of cannabis-related patents, there remain a lot of misconceptions about their enforceability. Many believe that cannabis patent and trademark applications were prohibited as part of the Controlled Substances Act (CSA). Others still mistakenly believe cannabis-related patents are unenforceable because of the CSA–an argument found invalid in a recent legal case.
Some of those who hold these beliefs are doing so in the hope of avoiding having to pay a licensing or royalty fee to the intellectual property owner whose IP is being infringed on, while others are just honestly mistaken.
Regardless of cannabis’s current status within the CSA, a cannabis-related patent is enforceable when granted by the USPTO (or other global patent office).
A Brief Sample of Granted Cannabis Patents
Currently, there are a plethora of patents that already have been granted and have been in effect for multiple years. These include patented genetics, processing and extraction methods, consumption technologies, and equipment of all sorts.
The number of genetic patents, in particular, continues to grow and I expect that number to accelerate rapidly with the advent of artificial intelligence (AI) and CRISPR technology (another recently filed patent application). No different than other proprietary genetics in the flowering industry, many new cannabis cultivars will be patented in the future, and I suspect most will be aimed at pharmaceutical applications with genetics that have unique chemical profiles or ratios, or produce an increased percentage of a desirable cannabinoid and/or terpene.
Listed here are just a few of the patents granted in the last few years, and some of the patent applications that have been filed recently.
1. A system for energy-efficient, multi-solvent extraction (patent 1, 2, 3, 4)–a proprietary extraction system that is licensable.
2. Multi-canister, solvent charging extraction–another proprietary and licensable extraction system.
3. Terpene distillation–an organic method of terpene distillation, also licensable.
4. Mobile extraction systems and wiped film solvent recycling–a mobile extraction facility that eliminates the need for smaller companies to construct extraction labs.
5. Purification of non-psychoactive isoprenoid compounds, specifically THCA –a commercial scale method to produce THCA crystals, which could be the foundation for certain cannabis pharmaceuticals.
7. Freeze-drying methodologies–there are multiple freeze-drying patents, which are great for predictably drying cannabis destined for extraction.
8. Resin separating technology utilizing dry ice/ CO2 gas–a patent for tumbling cannabis to separate resin glands/trichomes utilizing CO2 gas, or dry ice, to aid separation, making it scalable (and licensable).
9. Resin separating technology utilizing liquid nitrogen–another commercial scale resin gland/trichome separator, except this version utilizes nitrogen to freeze the resin glands/trichomes before they are mechanically sieved to separate the glands from the unwanted biomass. An existing system is licensable.
10. CRISPR technology-gene editing technology for cannabis crops–as I noted in an earlier column, CRISPR gene editing “involves precise alteration of the existing genes/genomes within a crop.”
These are only a small example of the many patents in play today. There are hundreds of granted cannabis patents as well as hundreds (if not thousands) of active patent applications. Once the rescheduling issue is clarified, I suspect there will be tens of thousands of cannabis-related patents instantly filed. Once major pharmaceutical companies enter the space, I expect there to be an unimaginable number of patent applications filed–and litigated.
I suspect that the combination of CRISPR technology and AI systems will yield a staggering amount of cannabis-related patents as growers create “designer” varieties ranging from plants that yield elevated or specific terpene and or cannabinoid levels or ratios, and superior yielding, disease-resistant, pest-resistant cultivars, to drought-tolerant, heat-tolerant hemp cultivars that could be utilized for industrial applications such as hemp-based plywood, bricks, or for a slurry that is utilized to 3D print houses. Growers could also design a genetic that yields elevated levels of terpenes that could be utilized as an alternative fuel source. The possibilities are many.
The Significance of an Evolving Patent Landscape
Some may not realize the implications of many existing and pending patents. For instance, one company, Houweling’s Tomatoes, holds nine patents for environmental controls of very large commercial greenhouses. If one were to construct a modern efficient greenhouse, one would be hard-pressed to avoid violating at least one of these granted environmental control patents. One commercial-scale greenhouse that was unknowingly employing the patented technology was sued for violating the patents.
Additionally, multiple vegetable greenhouse growers in multiple EU countries have unsuccessfully attempted to invalidate or challenge the patents at a cost of millions of dollars. Most cannabis growers don’t even realize these nine patents exist, or that they are susceptible to a lawsuit if they violate these patents.
Another quirk about patents is they can be enforced retroactively from the date of the application, not when it was granted. I am aware of one patent pending application that has been pending for seven years. If it is granted, it will take priority over multiple other granted patents because of its early filing date. The currently granted patents will either need to be amended to correct conflicting claims or be invalidated. There are currently multiple companies infringing on the pending patent that will be either forced to license the technology or face litigation.
The lifespan of most patents is 20 years from the nonprovisional patent filing date, and one year can be added at the front end by use of a provisional patent application.
As the coming cannabis patent boom takes place, many cannabis companies, from growers to consumer goods manufacturers, as well as systems designers and engineering groups, will likely be stunned by the amount of litigation that comes with it–the flash of lightning is soon followed by the crash of thunder.
Kenneth Morrow is an author, consultant and owner of Trichome Technologies. Facebook: Trichome Technologies Instagram: Trichome Technologies Email: [email protected]
Cannabis rescheduling is likely to spur a wave of patent applications and a wash of litigation in yet another growth spurt for the still-young industry. Read More