Protecting your cannabis business with Federal intellectual property registrations is an absolute must to ensure that competitors cannot steal or piggy-back on your investments in your brand or inventions. Patents protect your inventions, trademarks cover your brand, and applications for both go through the US Patent and Trademark Office (USPTO). As I discussed in my prior post, the Trademark office is not currently granting trademark applications that cover cannabis products. Interestingly enough, the USPTO treats patents for cannabis businesses very differently and WILL grant patents claiming cannabis or marijuana.

Just a very quick (and over simplified) primer on patents. Patents protect your inventions, and can cover novel compositions of products and/or processes you use in your business. For sake of this article, I will not explain plant and design patents, which are much less popular. Subject to some caveats, the patent term (the amount of time you have protection) is generally 20 years from the date of your application. During this time, you have the right to exclude others from making or using the invention claimed in your granted patent. Patent law is very complex and entire treatises are written on the topic, so I will not try to reduce all that law into a few simple sentences, but needless to say, patent protection is an important way to protect your business’ intellectual property. Well run technology companies of all sizes, have strong patent programs and apply frequently for patents on new and interesting ideas/inventions. Development of patent portfolios are an important part of supporting a technology company’s company’s value, and there’s reason to believe that new cannabis businesses will judged similarly by their intellectual property. For this reason, it’s important to consider patent protection for any novel ideas or inventions developed in your business.

A quick search of the USPTO patent database shows 383 granted patents and 1160 published applications that contain the word cannabis or marijuana in the claims (the claims define the metes and bounds of the patent’s protection). Considering the rapid growth of the cannabis industry in California, other legal states and Canada, this number should grow substantially over the coming months and years. You can be sure that large entities and those backed by venture funding will be applying for patent protection, so regardless of your business size, you will want to consider patent protection for anything you think is new and interesting.

Consider this as well, you may not want to enforce your patent against other players in the space, but having an issued patent prevents others from getting patent protection on your idea or something similar, and then using that issued patent against your business. There are other publication strategies that can help with that problem as well, but patent protection provides many other options, including licensing.

Furthermore, getting a patent application on file with the USPTO generally sets your priority date (again, this is a complex legal topic simplified substantially), so it’s important to get patent applications on file quickly if you plan to file.

The decision to file a patent application (or not) is a complex subject that requires competent legal counsel. This article provides some very simple guidelines in a very complex legal area, so if please contact me, or another patent attorney, for advice about your specific situation. One important note, patent practice before the USPTO requires being a licensed patent attorney or agent, so make sure that any attorney you work with has this required credential, as I do.

As always, nothing in this post constitutes legal advice or representation. Please contact me directly to discuss how these new regulations impact your specific business situation.

© 2019 McConnell Law Firm