Intellectual property is an important and often overlooked aspect of the marijuana industry. Intellectual properties are creations of the mind and consist of trademarks, copyrights, patents and trade secrets. Patents in particular are greatly beneficial to innovators in the marijuana industry yet are often underutilized by creators in the space.
What is a patent?
A patent is a constitutionally guaranteed right that gives patent holders a limited monopoly in their invention. It’s a kind of social contract between the inventor and the public, giving the inventor a monopoly in exchange for sharing the invention. When the patent expires, the public may have free reign on the invention.
This trade-off incentivizes an inventor to devote resources to research and development and to share the details of the invention with the public. A patent conveys the right to exclude others from making, selling, offering for sale, importing or using the invention. While this exclusionary right is well worth the cost of admission, it’s important to note that a patent does not convey any right for the inventor to actually practice the invention.
There are three kinds of patents: utility patents, design patents and plant patents. Yes, there are patents for plants. For the purposes of this article, we will look at the two most common types of patents: utility patents and design patents. We will have a longer discussion on plant patents in another article.
Utility patents are the most common type of patent and protect the invention of a new and useful process, machine, manufacture, composition of matter, or a new and useful improvement thereof.
This protection lasts 20 years from the filing date, provided the maintenance fees are paid.
A design patent protects the ornamental design of a functional item and lasts 15 years from the issue date. A design patent’s protection is narrower than a utility patent, but design patents do have value. For example, a design patent could protect a particular industrial design of a consumer product, such as a bong or a vaporizer.
There can also be overlap between design patents and trade dress, a type of trademark. This is because trade dress protection acts on a source identifier in the same way as as a logo or product name, but it protects nonfunctional design and product packaging. An iPhone® is an example of a product that is protectable by both design patents and trade dress protection.
Three requirements for patent protection
Inventions must meet three main requirements to receive a patent. The patent must have utility, novelty and non-obviousness.
1) Utility, regardless of government ‘morals’
First and foremost, the invention must be useful. This is generally a low standard requiring the invention to have some sort of function.
Until recently, however, patent attorneys did not file applications for inventions that lacked a legal use. This position was based upon a case in 1897 in which a court refused to uphold a patent on a gambling machine because it was “frivolous or injurious to the well-being, good policy, or sound morals of society.”
This is perfectly fine if the invention is a vaporizer that can use oils without any federally illegal additives, but it would not work so well for processes and compositions containing cannabinoids. Fortunately, as of 1999, the government’s opinion of morality is no longer a determining factor in patentability.
This opens up the entire area of marijuana innovations to federal patent protection. This may include methods of making edibles, solutions with ratios of cannabinoids in them, extraction devices and thousands of other innovations.
An invention must also be novel to be patentable. In order to provide the social contract and allow a monopoly, the invention cannot already be known to the public. This means that the invention cannot be previously described in any issued or filed patent, used by others or published in any papers.
Before filing a patent, it is usually prudent to search for previous inventions. However, this is an interesting area for marijuana patents because many innovators in this industry are underground and do not want to publicize their creative efforts.
Finally, an invention must not be obvious to one of ordinary skill in art. Every invention should solve a problem. If the solution to the problem is obvious to those working in the technical area, then the invention really isn’t innovative and is, therefore, not entitled to patent protection. This requirement is not always easy to determine in advance of filing the patent.
To give an example, there are many light sources used for supplemental light in greenhouses growing marijuana, such as high-pressure sodiums, metal halides and LED bulbs. If a new light source is discovered, perhaps a new type of glowing rice kernels, it would be obvious to try it in the greenhouse. Therefore, the use of this new light source as supplemental lighting would not be patentable.
However, say someone discovers that arranging glowing rice kernels in the shape of a buckyball and shining the light through a diffraction grating results in increased plant yield of 30 percent. This type of innovation would probably not be considered obvious to one of ordinary skill in the art and therefore could be patentable.
Patents can protect rapid innovation in the marijuana industry
The pace of innovation in the marijuana industry is not just staggering, but rapidly accelerating. Patents provide a way to protect those innovations. Patent protection also prevents others from patenting the very same invention. As the industry grows more crowded, only one’s brand and protectable innovations will separate one from the herd.