Written By: Natalie Del Cid
In markets involving technology, intellectual property protections are crucial. Once an invention is created, it is patented. [1] In the cannabis industry, the idea of patents are far removed. [2] The idea of creating and protecting intellectual property is still evolving. [3] Intellectual property protections are thus necessary to create a distinction between companies and the product they offer.
The cannabis industry has encountered barricades when it comes to this particular area of the law. A company can patent a strain of cannabis or hemp in California, but meanwhile that same strain can simultaneously be patented in Washington. [4]
Why is this an issue?
It is difficult for companies to secure a patent at the federal due to cannabis’ illegal status under U.S. federal law. [5] Even though a strain of cannabis or hemp may be patented on a state level, on a federal level it is not. It would be impossible for a federal court to determine a patent lawsuit that would involve two competing cannabis companies in different states. [6]
In regard to federal trademark registration, the biggest hurdle is the fact that cannabis is still listed as a Schedule I drug under the Controlled Substances Act. [7] Since federal law only allows for a trademark to be registered for goods that are “lawfully sold or transported in commerce,” cannabis is not include. [8] A violation of trademark law can therefore arise if a company in State A tries to expand its specific strain of cannabis into State B, but the cannabis strain of the State A company is already patented by another company in State B.
The first cannabis-related patent infringement lawsuit is currently taking place in the
United States District Court of Colorado. [9] In United Corporation v. Pure Hemp Collective, Inc., the petitioner, United Cannabis, is suing Pure Hemp Collective for infringement on safer cannabis extractions. [10] United Cannabis Corporation has an extraction method that “provide[s] unique active compounds that are useful to treat pain in various medical conditions.” [11] Pure Hemp Collective responded by filing an early motion for partial summary judgment arguing that the claims asserted were invalid and requesting a ruling that would “substantially reduce the number of issues before the court.” [12] The Colorado District Court rejected Pure Hemp’s invalidity argument and denied its motion. [13] The cannabis industry is closely monitoring the outcome of this case in order to speculate what the future in cannabis intellectual property matters. [14]
If the federal government were to legalize cannabis, it would allow for national trademark protections and eliminate the patent complications companies currently face. [15] For example, allowing cannabis to receive national trademark protections will implement judicial efficiency by not overburdening the courts with patent cases regarding the confusion of who owns the patent rights to their product. [16] With this issue being fairly new, the government has an opportunity to implement laws to prevent confusion among the federal courts.
[1] Kevin Murphy, Why Building Intellectual Property in The Cannabis Industry is So Difficult (September 26, 2019), https://www.forbes.com/sites/kevinmurphy/2019/09/26/why-building-intellectual-property-in-the-cannabis-industry-is-so-difficult/#34600a7c1fdc.
[2] Id.
[3] Id.
[4] Id.
[5] 21 C.F.R. § 1308.11 (2019).
[6] Murphy, supra note 1.
[7] Id.
[8] Id.
[9] Id.
[10] United Corporation v. Pure Hemp Collective, Inc., No. 18-cv-1922-WJM-NYW, 2019 WL 1651846 at 1 (D. Colo. April 17, 2019).
[11] Id.
[12] Donald Zuhn, United Cannabis Corp. v. Pure Hemp Collective Inc. (October 23, 2019), https://www.patentdocs.org/2019/04/united-cannabis-corp-v-pure-hemp-collective-inc-d-colo-2019.html.
[13] Id.
[14] United Corporation v. Pure Hemp Collective, Inc., No. 18-cv-1922-WJM-NYW, 2019 WL 1651846 at 1 (D. Colo. April 17, 2019).
[15] Murphy, supra note 1.
[16] Id.
