Patenting Your Cannabis Strain

February 24, 2020
joshuagoldberg
Policy & Legal, Uncategorized
2 Comments

Although most people think of manufactured goods when they hear the word “patent”, U.S. law also allows you to patent new plant varieties. This includes new strains and varieties of cannabis. Under 35 U.S.C. § 163, “In the case of a plant patent, the grant shall include the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States.” So, what does this mean? If you obtain a patent for your strain of cannabis, you have the right to stop anyone else from asexually reproducing your strain, as well as stopping any use, sales, or even offers to sell your strain within the United States.

U.S. plant patents are limited only to plants which can be asexually reproduced. Fortunately, cannabis strains typically fall into this category, although you will have to be able to prove it. In plants, asexual reproduction means reproduction which does not involve pollen being transferred from a male plant to a female plant; in other words, asexual reproduction is reproduction using cuttings, budding, grafting, etc. So, as long as you can show your new strain of cannabis can be reproduced from cuttings, by grafting, etc., you would meet this first requirement. Keep in mind that cannabis is typically sexually reproduced. So, in order to move forward with a plant patent application, you should be able to prove your plant is capable of being grown without both the male and female plants, ideally in a lab setting.

The second requirement is common to all U.S. patents: your cannabis variety must be new and be considered a non-obvious variant (when compared against already known strains). In other words, if someone else already came up with your strain – or something so close to yours that yours is considered an “obvious” variation – you will not be able to obtain a patent. Your new plant must differ from already known plants by at least one distinguishing characteristic, which must be a unique characteristic more than just what would be caused by different growing conditions. In addition to being new and non-obvious, your strain cannot be something you discovered growing in the wild, i.e., you must develop the strain yourself, rather than simply discovering it growing naturally.

The “term” (or lifetime) of a plant patent begins on the day the plant patent issues and goes for 20 years after the day the plant patent application was filed. For the lifetime of your patent, you essentially control the marketplace for your strain of cannabis. This means you can either choose to be the sole supplier, you can grant licenses to others and collect royalties from their sales, or you can sell your patent rights outright. Whichever you choose, you have exclusive control over that decision for the entire term of the patent.

The cannabis industry has grown by leaps and bounds over the past few years, with cannabis becoming legal in more states every year. As with all industries, the need for intellectual property protection is growing side by side with the growth of the cannabis industry. If you have a new strain of cannabis, or have an idea for something cannabis-related, bear in mind that patent rights in the United States are now granted on a “first to file” basis (i.e., the first party to file a patent application), rather than the previous “first to invent” basis. So, you might want to give serious consideration to consulting with a patent attorney sooner rather than later.

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.

This Post Has 2 Comments

Carl Huebsch says:

May 5, 2021 at 6:20 am

Good day

I would like to know how to register my strains and how to apply for a growers license

Reply
1. Rob Meagher says:
  
  May 5, 2021 at 7:18 am
  
  Carl,
  
  Get ready to spend some substantial money on a good Intellectual Property attorney and reach out to the state regulatory agency online to review their license application costs and requirements. Once again get ready to spend a lot of dough and be well capitalized. You can go to the link below to find the state regulatory website and contact information where you are located. https://www.cannabisbusinessexecutive.com/marijuana-state-regulatory-contacts/ RM
  
  Reply

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