According to leading cannabis researchers, the next decade will see spending on legal cannabis worldwide escalate to $57 billion by 2027. Within this figure, the recreational market will constitute 67% of the spending while the medical market will fill in the remaining 33%. The majority of the industry will take place, on both the buying and selling side, in North America.
The relationship between intellectual property (IP) law and cannabis is complex due to the ongoing federal prohibition of cannabis in the United States and other countries. While some jurisdictions have legalized cannabis for medical or recreational use, cannabis remains illegal under federal law in the US, making it difficult to obtain IP protection for cannabis-related inventions and products.
One of the main challenges facing cannabis businesses seeking IP protection is the lack of clarity and consistency in the legal landscape. For example, while some states in the US have legalized cannabis and allow for the issuance of patents related to cannabis, the US Patent and Trademark Office (USPTO) still considers cannabis a Schedule I controlled substance and therefore does not allow for the registration of trademarks related to cannabis.
This inconsistency in the legal landscape can create uncertainty for businesses seeking to protect their cannabis-related inventions and products. Without clear legal guidance and protection, businesses may struggle to secure funding, form partnerships, and defend against infringement.
In addition to the legal challenges, there are also ethical concerns surrounding IP protection in the cannabis industry. Some argue that IP protection could lead to monopolies and hinder innovation, particularly for small businesses and growers. Others believe that IP protection is necessary to incentivize investment in research and development and ensure quality control.
Protecting valuable intellectual property in the cannabis industry requires a well-planned strategy that emphasizes forward thinking.
Trademarks
While cannabis companies can’t receive federal trademark protection, there are other options. Trademarks tangentially related to cannabis may be eligible for a trademark. This may help you prepare for the future, as “securing federal trademark registration protection now for goods and services that are lawful can preserve future trademark rights for cannabis-related products and services that are currently unlawful.”
You can also apply for state trademarks in states where cannabis is legal. This is most effective when done not just in the state(s) where you operate, but all that have legalized it. There are many countries around the world where cannabis is legal; trademarking internationally is also a relevant potential IP strategy. Regardless of which trademark strategy is best for your business, a trademark clearance search can help you identify potential roadblocks to federal protection in the future.
Patenting Cannabis & Innovative Opportunities
Unlike trademarks, patent protection is not restricted by the Controlled Substances Act. Cannabis-related technologies are eligible for design, utility, and plant patents. This tactic for protecting cannabis IP is still in its infancy. On one hand, very little prior art exists, increasing the chances of being granted valuable patent protection. On the other, the ability to protect your patent in court is very much unknown.
Despite the challenges, there are some avenues for cannabis businesses to pursue IP protection, such as obtaining patents for specific cannabis-related inventions and securing trade secret protection for proprietary formulas and processes. As the legal landscape continues to evolve, it is important for cannabis businesses to stay informed and consult with legal professionals who specialize in IP law.
It is not impossible to secure IP rights on cannabis-related inventions, but there are a number of factors to consider and a number of complexities that must be navigated. As mentioned earlier, the federal prohibition on cannabis in the United States and other countries creates significant legal challenges for obtaining IP protection. However, some jurisdictions have found ways to work around these challenges.
For example, in Canada, cannabis is legal for medical and recreational use, and the Canadian Intellectual Property Office allows for the registration of patents related to cannabis. Similarly, in certain states in the US, such as California, Colorado, and Washington, businesses can obtain patents for specific cannabis-related inventions, such as new strains of cannabis plants or methods of extraction.
Examples of Patented Plants
Plants that have been patented:
- “Enigma” Blackberry – patented by the United States Department of Agriculture (USDA) in 1998
- “Honeycrisp” Apple – patented by the University of Minnesota in 1991
- “Owari” Satsuma Mandarin – patented by the USDA in 1959
- “Brandywine” Tomato – patented by the Landis Valley Museum in Pennsylvania in 1982
- “Star” Roses – patented by the Conard-Pyle Company in 2005
- “Florida Elyana” Tomato – patented by the University of Florida in 1999
- “Apache” Blackberry – patented by the USDA in 1998
- “Lavender Lady” Lilac – patented by the University of Vermont in 1976
- “Blue Ribbon” Strawberry – patented by the USDA in 1972
- “Better Boy” Tomato – patented by the University of Florida in 1986
Not all countries allow the patenting of plants or plant varieties, and different rules and regulations apply in each country.
Other types of plant patents exist for plants that are asexually reproduced. Plant patents are issued by the United States Patent and Trademark Office (USPTO) to protect new and distinct varieties that are created. Asexually reproduced plants are those that are propagated by means other than from seeds, such as through cuttings or grafts. Here are some additional examples of plants that are patented:
- “Endless Summer” Hydrangea – patented by Bailey Nurseries in 2004
- “Pink Diamond” Hydrangea – patented by Bailey Nurseries in 2016
- “Knock Out” Rose – patented by William Radler in 2000
- “Pink Princess” Philodendron – patented by Jose M. Abreu in 1975
- “Blue Heaven” Iris – patented by Schreiner’s Iris Gardens in 2001
- “Sweetheart” Blueberry – patented by the University of Florida in 2003
- “Meadowbrite” Daylily – patented by Walter Jablonski in 1995
- “Lil’ Ditty” Dwarf Viburnum – patented by Spring Meadow Nursery in 2020
- “Natchez” Crape Myrtle – patented by the National Arboretum in 1984
- “Sunny Knock Out” Rose – patented by William Radler in 2007.
It’s important to note that plant patents only protect the asexually reproduced plant and do not extend to sexual reproduction or any seed or fruit produced by the plant.
Trade Secrets
Trade secrets do not require approval from the USPTO, and both state and federal laws exist to protect trade secrets. This method for protecting your cannabis IP is best for technology that cannot be reverse-engineered easily. It requires a contract, as well as other “reasonable steps to maintain the secrecy of the proprietary information.”
IP Competition & Legalities
In addition to navigating the legal landscape, businesses seeking IP protection for cannabis-related inventions must also consider the potential for opposition and challenges from competitors. Given the growing interest and investment in the cannabis industry, there is likely to be increased competition for IP rights in this space.
Another factor to consider is the potential for evolving regulations and laws related to cannabis. As more jurisdictions legalize cannabis, the legal landscape is likely to shift, creating new opportunities and challenges for businesses seeking IP protection.
Overall, while it is not impossible to secure IP rights on cannabis-related inventions, it requires careful consideration of the legal, ethical, and competitive factors involved.