Is Cannabis Patentable?

In short, yes, and there are many different ways in which cannabis and cannabis-related inventions may be protected.

The U.S. government has authority to grant patents under the Patent and Copyright clause of the U.S. Constitution (U.S. Const. Art. 1, § 8, cl. 8).  By comparison, the U.S. government has authority to grant trademark registrations under the Commerce Clause of the United States Constitution (U.S. Const. Art. 1, § 8, cl. 3).  Since cannabis is still classified by the U.S. government as a DEA Schedule 1 drug, the U.S. government’s authority to regulate commerce in connection with cannabis-related goods and services (including granting trademark registrations) is restricted.  This is why the U.S. government may grant patents relating to cannabis but will not issue trademark registrations for cannabis-related goods and services.

The U.S. Patent Laws include the Plant Patent Act (35 U.S.C. §161 et seq.), which provides for the protection of cultivated asexually reproduced plants.  Utility patents may also be pursued for cannabis and cannabis-related inventions.  Additionally, the Plant Variety Protection Act (7 U.S.C. §2321-§2582) through the U.S. Dept. of Agriculture may soon provide additional avenues for patent-like protection.

Plant Patents

The Plant Patent Act provides for the protection of any new and non-obvious variety of plant reproduced in a cultivated state via asexual reproduction such as rooting, cutting, grafting, budding, cloning etc.  Tuber-propagated plants are specifically excluded from the Plant Patent Act (35 U.S.C. §161).  An applicant for a plant patent must show the identifiable features that make the plant new and non-obvious, and must show all circumstances of the reproduction in a cultivated area.  Infringement of a plant patent requires asexual reproduction (exact duplication), so the protection applies only to the plant.  A plant patent does not protect seed or pollen from the plant.  Plant patents have been granted for asexually reproduced cannabis plants, and plant patents have a term of 20 years from the filing date of the application.  See, for example, US PP 34,802 titled Cannabis Plant Named ‘UNIQUE FLOWER ORIGINAL HAZE,’ US PP 33,483 titled “Cannabis Plant Named ‘DIVINA,’ and US PP 33,332 titled Cannabis Plant Named ‘HAPPY PINEAPPLE.’

Utility Patents

Many aspects of the cannabis cultivation, farming, harvesting, bud processing and extract processing industries may be protected by utility patents.  Utility patents (which comprise the bulk of U.S. patents) may potentially be directed to any new and useful process, machine, article of manufacture or composition of nature (35 U.S.C. §101).  Utility patents may be available, for example, for plant tissue, cells, seeds, parts of a plant, whole plants, uses of the plant, methods used to grow, cultivate or process the plant and extracts of the plant, as well as edibles that contain extracts of the plant.

The scope of protection in a utility patent is defined by the claims in the patent.  The bulk of patents relating to cannabis are utility patents (about 400-500k cannabis related utility patents are granted per year) as opposed to plant patents (about 1-2k cannabis plant patents are granted per year).  Utility patents have a term of 20 years from the earliest non-provisional U.S. application priority date (as adjusted by any Patent Term Adjustment period).

Plant Variety Protection Act

In addition to plant patents and utility patents, there is another form of protection that is available for plants.  In 1970, the Plant Variety Protection Act (PVPA) was enacted to protect new, distinct, uniform and stable sexually reproduced or tuber-propagated plant varieties.  The PVPA applies only to seed-bearing plants, and infringing acts include sexually multiplying the variety as well as producing hybrids.

The PVPA however, is provided through the U.S. Department of Agriculture, whose authority is under the Commerce Clause of the U.S. Constitution.  So, protection under the PVPA is not currently available for cannabis plants.  The Department of Agriculture however, recently began receiving applications for industrial hemp (Cannabis sativa) having less than 0.3% THC.

At some point in the (near?) future, cannabis may lose its designation as a DEA Schedule 1 drug.  When this happens, expect a flood of federal trademark registration applications for cannabis related goods and services (many companies are now pursing state trademark registrations).  Much less known however, is the PVPA, which will also open up to cannabis plants when such a change happens.  The PVPA may provide valuable alternate routes to seeking patent-like protection for sexually reproduced cannabis plants.  Applicants for PVPA certificates must submit 3,000 seeds with an 85% or more germination rate.  The term of PVPA certificates is 20 years from grant of the certificate or 25 years in the case of a tree or vine.  A listing of PVPA Certificates may be found at https://apps.ams.usda.gov/CMS/CropSearch.aspx.

Conclusion

There are many different ways therefore in which cannabis and cannabis-related inventions may be protected by patent.  Further, when cannabis becomes declassified as a DEA Schedule 1 drug, the Plant Variety Protection Act may provide further opportunities for protecting sexually reproduced cannabis plants.

William E. Hilton

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