Cannabis-Related Patent Strategies Pending Legalization

In speaking with clients and others in the cannabis industry, one question we increasingly hear is whether it is worthwhile to try to obtain a patent for cannabis-related inventions in the current uncertain legalization climate. The short answer to this question is yes. That said, there are numerous potential strategies that can be pursued to get such a patent, with some making more sense than others.

For one thing, any granted patent rights are limited to, and only enforceable in, the country where they are obtained. So, for example, a US patent directed to your invention can only be enforced in the US, a Canadian patent directed to your invention can only protect your product sold in Canada, and so on. So, depending on where you hope to conduct your business, it may be necessary to obtain patent protection in one, two, or many different countries.

One solution to this issue that is commonly used in many industries is to take advantage of the International Patent Application process by filing what is called a Patent Cooperation Treaty (PCT) patent application. Filing a PCT patent application lets the applicant delay filing in each country where protection is desired for 30 months. This is typically used to defer the costs involved in filing in each individual country, which can be substantial, while also allowing the applicant time to further develop the invention to obtain a greater confidence it is worth proceeding.

In addition to these benefits, there is another substantial benefit to filing cannabis-related inventions using the PCT application route. Namely, the legalization of cannabis, and the potential ability to protect cannabis-related inventions, is in different stages of progress throughout the world. Filing a PCT application provides time for the relevant laws to develop, and hopefully come out in support of cannabis protection, before filing decisions must be made and costs must be incurred throughout the world.

This is a strategy that some companies are clearly already pursuing. For example, a simple search of the PCT online patent database reveals that more than 1,470 PCT applications have been filed and published directed to “cannabis” just since the beginning of 2016. Similarly, more than 1,230 PCT publications can be found directed to “cannabinoid,” while more than 1,160 PCT publications can be found directed to “THC” over the same time period. By point of comparison, similar searches of the US Patent and Trademark Office (USPTO) database over the same time frame reveal more than 600, 510, and 390 publications, respectively.

For companies focused on the US market only, filing a PCT application first has two negatives associated with it – the cost of an additional filing and the delay in examination of the corresponding US patent application. Since the US Patent & Trademark Office is currently examining and granting patent applications directed to various cannabis-related inventions, it may make sense to just file a US patent application directly. However, since there is still a lingering concern over whether a US court will permit a patent directed to a federally illegal substance to be enforced against a third party, filing a PCT application to wait for more clarity on this issue might make sense. In addition, for companies having any interest in various other international markets, filing a PCT application makes sense for all the reasons mentioned above. Hopefully, more markets will clearly allow the protection of cannabis-related inventions by the time 30 months have passed and it is necessary to file the PCT application in any country of interest.