Patent Law and Pot: How to Protect Your Green Rush Goldmine

Marijuana patents are a cannabis company’s most-prized possession (maybe).

Howard Cohn is the chief patent attorney and managing partner at THC Legal Group, a team of marijuana lawyers specializing in legal protection for the cannabis industry. Cohn has been a registered patent attorney for more than 30 years, working with some of the most technologically advanced companies in the world—IBM, Goodyear, NASA, even the U.S Army. 

"What always impressed me most about these companies," Cohn tells KINDLAND, "was their organizational commitment to efficiency and precision. These companies did not stumble into success. Their success was and is a function of their will to be the best."

Later, it occurred to Cohn that this internal demand for unyielding excellence would ultimately separate successful cannabis companies from those that fell by the wayside.

Several years ago, Cohn's principal law firm, Howard M. Cohn & Associates, began receiving requests from emerging businesses in the cannabis space for guidance in securing their intellectual property. After working with a number of marijuana businesses, the firm formed a specialty group, THC Legal Group, to deal specifically with the marijuana industry. THC Legal Group has expanded its services to facilitate all of the various legal needs of startups and businesses in the cannabis space, but its core competency is expertise in complex patent and light-intellectual property law (trademarks, copyrights, licensing etc.), and that's why KINDLAND enlisted the firm's managing partner to discuss the intricacies of pot patent law.

KINDLAND: Tell us the most attractive areas to pursue for patent opportunities.

Howard Cohn:  A patent is a government-issued property right to the creation, production, and sale of an invention. Patents must be both useful and non-obvious and are awarded for a period of 20 years.

'The common misconception that obtaining a patent on a cannabis strain is not possible is predicated on two separate prongs of misunderstanding.'

Cannabis companies should be interested in obtaining patents for two different types of cannabis inventions: The first is for all inventions that are ancillary to the cannabis itself. For example, currently there's a great interest in agricultural tools that can better facilitate the growth of the plant. A startup company that has developed, let's say, a proprietary heating solution for a grow house would likely need to obtain a patent to protect their sole ownership rights to that heating system. If they did not obtain a patent, a competitor might very well be able to copy their heating solution and sell it on the open market. It's very easy to see why this would be undesirable to the innovative startup.

More controversial, however, is the second category of patents in the marijuana space. Scientists and geneticists are working all over the country to develop better and more pristine strains of marijuana. Consequently, the desire to obtain patents and preclude others from subsequently creating/replicating these genetically engineered strains is immense. The common misconception that obtaining a patent on a cannabis strain is not possible is predicated on two separate prongs of misunderstanding.

The first is based on the intuition that because marijuana is federally illegal under the Controlled Substance Act, it would be untenable for the federally governed United States Patent Office (USPTO) to issue a patent on it. However, as a matter of law, this is not the case. Patent law does not textually preclude obtaining a patent on something that is federally prohibited (unlike trademark law, which specifically precludes obtaining a trademark on a good or service that cannot be sold in commerce).

'Don’t tell anyone what your idea is until it is protected! The risk of someone stealing it is too great.'

The second charge is that because cannabis is a natural plant, a person may not claim patent rights on it. This understanding is only superficially accurate. It is true that one cannot obtain a patent on a natural phenomenon; one can obtain a patent on an organism that has been sufficiently genetically modified. Therefore, if a geneticist were to engineer cannabis on a genetic level in such a way as to alter it sufficiently (however the USPTO chooses to interpret that word), he/she may very well be able to acquire a patent on it.

KINDLAND: What are the most common pitfalls en route to securing a marijuana patent?

Howard Cohn: A. Companies must strive to invent something that is not only new but is also useful. If it doesn’t solve a problem, it likely won’t yield any revenue.

B. Once you come up with a good idea, make sure your patent attorney conducts a patent search to ensure that no one else already owns a patent on it. It would be a tremendous waste of time and money to go through the patent process, only to discover that the patent is unattainable.

C. Don’t tell anyone what your idea is until it is protected! The risk of someone stealing it is too great.

D. Once you have obtained a patent and have managed to monetize it, it is very likely that you will be approached with various offers to purchase it. Do not sell it to the first bidder. If you have truly invented a remarkable idea, there will be plenty of opportunity to sell it to the right and qualified purchaser.

For more information, please visit the THC Legal Group website.