Yes, It Is Possible to Get a Patent on Your Cannabis-Related Invention

June 13, 2019 by Joshua Goldberg Leave a Comment

As the cannabis industry continues to grow, many businesses are increasingly concerned with protecting their intellectual property. One concern that arises is whether any new cannabis related innovations and inventions can be protected by a US patent. Thankfully, the answer seems to be that yes, cannabis related patents can be obtained, provided they meet all the general requirements for obtaining a patent.

For one thing, a simple search of the US Patent and Trademark Office (USPTO) online patent database reveals that more than 330 U.S. patents have been granted including the word “cannabis” somewhere within the scope of protection. Similarly, about 500 U.S. patents can be found based on the word “cannabinoid,” while more than 900 U.S. patents can be found by searching for protection given to “THC”. The USPTO is thus clearly granting patents for at least some cannabis related inventions.

Not only are U.S. patents being granted, but we now have evidence of them being upheld in court as well. On April 17, 2019, the United States District Court for the District of Colorado affirmed the enforceability of the first cannabis-related patent to make its way through the U.S. federal court system in United Cannabis Corp. (“UCANN”) v. Pure Hemp Collective Inc. Specifically, the District Court decided that cannabis formulations can be considered as patentable subject matter.

UCANN’s patent, U.S. Patent No. 9,730,911 (the ‘911 patent), claims “[a] liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is [tetrahydrocannabinol (THC), cannabidiol (CBD), cannabinol (CBN), or a combination thereof]”. Pure Hemp, in defense of a charge of patent infringement, argued the patent was invalid as being directed to an unpatentable product of nature. In upholding UCANN’s patent, the District Court indicated Pure Hemp failed to establish a liquified formulation of cannabinoid, at the concentrations specified in the ‘911 patent, could occur in liquid form in nature. This was a win not only for UCANN, but also for cannabis-related patent holders generally. It also closely follows on the heels of a USPTO decision in an Inter-Partes Review (IPR) proceeding in January 2019 where a cannabis-related patent was treated just like any other patent and largely survived intact. Based on these results, we should expect cannabis-related patents to be treated just like any other patents by the U.S. court system, both positively and negatively. This represents a significant step in bringing more certainty to the IP created and owned by cannabis businesses.

Accordingly, those in the cannabis industry should expect to see an increase in cannabis-related patent applications being filed, with a resulting increase in cannabis related patents being granted. In view of this recent trend, and as the enforcement of cannabis-related IP rights becomes more certain, the value of obtaining cannabis related patents will only continue to grow. Any cannabis related business that does not take active steps to protect its intellectual property may find itself left farther and farther behind the competition.

About Joshua Goldberg

Joshua B. Goldberg is the Partner-in-Charge of the Chemical, Pharmaceutical and Biotechnology Department of Nath, Goldberg & Meyer and works extensively with the firm’s Trademark department. Mr. Goldberg’s practice involves portfolio management and analysis, including the preparation, prosecution, and acquisition of U.S. and foreign patents across a wide range of technology areas. Mr. Goldberg has had a recent focus on patent and trademark issues related to cannabis products and has helped navigate clients through the options available for protecting the same.

Howard W. Kline is the Trademark Department Manager at Nath, Goldberg, and Meyer. Mr. Kline’s practice involves all aspects of trademark, unfair competition, and copyright law. He counsels clients on the availability and registration of trademarks and secures trademark registrations in the U.S. and throughout the world. Mr. Kline also represents clients in matters before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board.

Practice Areas

Mr. Goldberg’s practice areas include:

Patent Estate Development, both in the U.S. and Internationally
U.S. and International Patent Application Drafting and Prosecution for Chemical, Pharmaceutical, and Biotechnology Innovations
Technology Evaluation and Positioning
Legal and Scientific Research and Analysis regarding Patentability, Patent Validity, Enforceability, and Freedom to Operate
Licensing, Acquisitions, Divestitures, and Joint Ventures
The Preparation, Filing, and Management of Oppositions Before the European Patent Office

Professional Profile

Mr. Goldberg received his practical scientific experience while performing research and development for Particle & Coating Technologies, Inc. During this stage of his career, Mr. Goldberg was responsible for the development, design, and experimental creation of various pharmaceutical delivery systems.

While in law school, Mr. Goldberg commenced his career in Intellectual Property law as a law clerk at NGM. Mr. Goldberg earned his U.S. Patent and Trademark Office Registration Number in 1998, and was admitted to the Bar of the Commonwealth of Virginia in 1999.

Mr. Goldberg has been actively practicing patent law at NGM since 1997. He has prepared and prosecuted numerous patent applications for both international and domestic clients in a wide variety of technology areas. His current practice places a particular emphasis on the chemical, pharmaceutical, biotechnology, and mechanical art areas. He also advises corporate, university, and independent clients in such areas as the development of offensive and defensive patent portfolios, the preparation of patent enforceability and invalidity opinions, and in freedom to operate searches and analysis

Mr. Goldberg is an elected Manager of the Chemical Society of Washington chapter of the American Chemical Society. He is also a member of the American Intellectual Property Law Association (AIPLA) and the Chemical Practice Subcommittee of AIPLA, the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI), the Jewish Federation, the U.S. Patent Office’s Chemical and Biotechnology Customer Partnership, and other professional organizations.

Mr. Goldberg received his J.D. degree from The George Washington University (1999) and his B.S. degree in Chemical Engineering with a minor in Environmental Engineering from Washington University in St. Louis (1996). Mr. Goldberg is registered to practice before the U.S. Patent and Trademark Office and is admitted to practice before the Bars of the Commonwealth of Virginia and the District of Columbia. Mr. Goldberg is also admitted to practice before the Court of Appeals for the Fourth Circuit, and the Superior and Inferior Courts of the Commonwealth of Virginia.

About Joshua Goldberg

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