In November 2016, Biotech Institute LLC did what many thought was impossible; they received a utility patent on a strain of cannabis. While there are many ways to protect the intellectual property of your cannabis-related business, until recently, it was impossible to get a utility patent on an actual strain of marijuana. However, likely due to the changing public opinion toward marijuana, the United States Patent and Trademark Office (“USPTO”) granted United States Patent No.: 9,095,554 (“the ‘554 Patent). The ‘554 Patent is a whopping 145 pages and is for the “breeding, production, processing, and use of specialty cannabis.”
Before delving into the specifics of the ‘554 Patent, the significance of it being granted should be discussed. For the uninitiated, utility patents are arguably the strongest form of intellectual property. As such, the USPTO’s refusal to grant utility patents on a strain of cannabis stood as a significant hurdle for many breeders looking to protect their new and innovative strains of cannabis.
That said, while utility patents were previously unavailable on a strain of cannabis, many utility patents have been issued for a particular method of using a strain of cannabis. One example of a utility patent is United States Patent No.: 6,630,507, awarded in 2003 to the United States government, for a strain of non-psychoactive cannabinoids, although numerous other examples exist directed towards the medicinal use of cannabis. However, as new uses for certain strains become discovered, these method patents become less valuable as they frequently fail to cover the new uses of the strain. In contrast, the ‘554 patent covers the strain itself, which means that merely making, using, selling, offering to sell, or importing the strain within the US is patent infringement. As such, the fact that the ‘554 Patent was granted creates a new basis for breeders to gain unprecedented protection over their strains.
Before the ‘554 Patent, breeders could also seek state trademark protection, a plant patent (in rare circumstances), or the Plant Variety Protection Act (“PVPA”), which conveys patent-like rights over the seeds and their use to create a plant. While the PVPA does seem like an attractive alternative to a utility patent, to date, no one has enforced PVPA protection over a strain of cannabis, so there are a lot of questions marks as to how something like that would work. This makes the PVPA a less attractive option than protecting a strain with patents.
Turning to the specifics of the ‘554 Patent, legal protection is granted for a “hybrid cannabis plant” having four things: (1) a BT/BD genotype, (2) a terpene profile where myrcene is not the dominant terpene, (3) a terpene oil content greater than 1% (by weight), and (4) a CBD content greater than 3%. What makes this strain particularly unique is that cannabis plants that have a BT/BD genotype typically exhibit high amounts of THC and low levels of CBD. However, as the strain in the ‘554 Patent has high CBD concentrations with a BT/BD genotype (and the fact that myrcene is not the dominant terpene) rendered this strain innovative enough to receive utility patent protection. Exactly how this will extend to other innovative features of cannabis strains remains to be seen, however this Author is excited to see how this space develops.
Something that’s important to note is that Biotech Institute LLC, the owner of the ‘554 Patent, filed this application in March of 2014, years before there was any indication that such protection was available over strains of cannabis. What does that mean? It means that Biotech Institute had the vision and risk-tolerance to aggressively pursue patent protection, and that vision allowed them to be the first company in the 228-year history of the USPTO to receive a utility patent on a strain of cannabis. Seriously, this is no small feat.
So after all of this I’m sure you’re wondering, what exactly does this mean for breeders in the future? While the exact consequences remain to be seen, I would expect a glut of utility patent applications directed towards strains of cannabis being filed in the near future.
About the Author: Matthew G. Miller, Esq. is Principal and Patent Attorney at MG Miller Intellectual Property Law LLC. Matt received formal training in chemistry at the University of Chicago, is very passionate about innovations in high technology, and is an amateur computer programmer. He uses this combination to develop creative, effective, and efficient intellectual property portfolios.