So you think your cannabis strain is unique, special and you want to protect it. Well, can you? Can you really protect a plant? Should cannabis breeders even be able to protect a plant? Clearly, the policy questions here are just as important as the legal practicalities.
Setting the Stage
During the 1960’s, the International Union for the Protection of New Varieties of Plants (UPOV) established the necessary criteria to be met for a newly “developed” plant to rise to the level of a bona-fide invented plant: novelty, distinctness, stability, and uniformity. This International approach and indeed recognition of the capacity and right to protect cultivated plants has set the tone for the future ownership rights of cannabis strains.
Getting into the Weeds of the UPOV
Novelty refers to the actual uniqueness of the plant; it must not have been previously used, sold, or even “known” (one can imagine the difficulty in establishing this criterion) elsewhere. Stability refers to the strains capacity to remain true or unaltered after repeated propagation. Homogeneity refers to the uniformity of the plant; the distinct characteristics of the plant must not vary across plants. These criteria were developed with the understanding that new strains of plants, especially for food production, could facilitate the innovation of farming and reduce national hunger through enhancements in the quality and yield of the plant. Therefore, to encourage the development of new plant varieties, the UPOV established a proper procedure for obtaining IP rights.
Protect Your Plant!
Under the UPOV convention, IP protection for new cannabis strains in the U.S. can be obtained in three ways: (1) as a plant variety protection plan through the Department of Agriculture, (2) as a plant patent through the Patent and Trademark Office (USPTO), and (3) as a utility patent through the USPTO. Plant patents, similar to utility patents, must provide a minimal amount of utility. This does not necessarily mean that the plant has to have a particular medicinal benefit, as “utility” can arise in many ways, including a specific visual characteristic or colour, smell, shape, taste, fiber strength, and soil enrichment etc.
The U.S Supreme Court’s Take on “Owning” Living Organisms
In arguably one of the most important cases of the 20th century, Diamond v. Chakrabarty was brought before the Supreme Court and considered whether or not a living organism was inherently, patentable. Ultimately, the Court held that under the proper circumstances, patents are available to these crafty geneticists. Justice Warren Burger articulated the crux of the test for patentability by carefully evaluating the statutory language governing patents: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
35 U.S.C § 101 as Justice Burger understood this statute, the law was written in vague terms by design. Indeed, according to Burger, the broad language can and should be read to maximize the protections of the inventor when examining contentious claims involving rights to “natural organisms”. Lastly, Justice Burger argued that if the patent’s claim is “to a non-naturally occurring manufacture or composition of matter”, the organism is no longer merely a natural phenomenon but rather a product of “human ingenuity.” Human ingenuity is what we, as a society, want to reward and it is this very transition from natural phenomenon to human invention, which is the key to the possibility of cannabis patents.
Of course, it is undoubtedly true that the Chakrabarty case was not written to specifically address the viability of patents for cannabis strains. Yet the implications for cannabis cultivators are enormous. Justice Burger’s elastic reading of the rights to new strains of cannabis suggests that one would merely need to sufficiently modify the naturally forming strain of the plant in such a way as to make it a product of human ingenuity. How much modification is required? There is unfortunately no finite amount or number that can be satisfactorily relied upon. If you are the inventor, keep your fingers crossed that the patent examiner in the USPTO is in a good mood when evaluating your case.
Cannabis and the age of the Utility Patent
While the Chakrabarty case certainly laid the theoretical framework for Cannabis patents, cannabis geneticists were provided with no practical guidance as to how to best design their strains to satisfy the rigorous demands of the USPTO. However, all of that changed with the unprecedented issuance of THE patent that will forever change the landscape of the cannabis industry. In November 2016, the very first utility patent was granted to Biotech Institute LLC, for a cannabis strain with uniquely high levels of THC. Granted as United States Patent No.:9,095,554, the patent covers the “breeding, production, processing, and use of speciality cannabis.” The importance of this patent cannot be overstated as it grants not only rights to the method of use of a particular strain but rather ownership of the strain itself. To highlight this distinction, please consider the infamous patent granted to the United States government – US No.: 6,630,507. This patent, which stirred the ire of Cannabis purists and entrepreneurs to no end, merely granted proprietary rights to a particular method of using the strain, vis-à-vis its medicinal benefits. US9,095,554 is powerful precisely because its not confined to its application.
US9,095,554 – What’s Inside?
Patents seek legal protection for the proprietary ownership rights of a given invention. Specifically, the patent application must include “claims” to specific features of the invention. Here, the patent is for a “hybrid cannabis plant” that possesses four key elements.
a) a BT/BD genotype;
b) a terpene profile in which myrcene is not the dominant terpene;
c) a terpene oil content greater than about 1.0% by weight; and
d) a CBD content greater than 3%;
While “CBD content greater than 3%” may seem like a rather trivial amount to non-cannabis aficionados, it is in fact unusually high. The marked ingenuity of this genetic structure was articulated by the inventors in the patent application’s Summary of Invention section, which states the following:
“The present invention provides specialty cannabis plants, plant parts, plant tissues and plant cells which provide a way to deliver a consistent and more tolerable and effective ratio of cannabinoids by providing plants that comprise non-THC cannabinoids (“CBs”) to patients (e.g., <THC:>CBs than in presently-available cannabis varieties).”
US9,095,554 – What’s Does it Mean?
Well, for better or worse, the industry is changing and newer and more powerful players are entering the fold. The industrialization of cannabis is surely upon us and depending on one’s perspective, this inevitable commercialization is either a promising industry advance or a crippling blow to a community that started out with more modest intentions.
This blog post is for informational purposes only. Nothing in this post should be construed as legal advice.