With the legalization of cannabis for medicinal and adult use occurring rapidly at the state level, the industry is seeing a sharp increase in innovative technologies, particularly in the area of cannabis extraction. Companies are developing novel extraction methods capable of not only separating and recovering high yields of specific cannabinoids, but also removing harmful chemicals, such as pesticides, from the concentrate.
While some extraction methods utilize solvents, like hydrocarbons, the industry is shifting toward solvent-free techniques or environmentally friendly solvents. For example, many methods rely on CO2, heat and pressure to create a concentrate.
The resulting cannabis concentrate can then be consumed directly or infused in edibles, vape pens, topicals and other non-plant-based products. With companies continually seeking to improve existing extraction equipment, methods and products, it is critical for innovators working in this area to secure their niche in the industry by protecting their intellectual property (IP).
Regardless of the extraction method, unprotected innovations can easily be stolen by competitors.Comprehensive IP protection for a business can include obtaining patents for innovations, trademarks to establish brand protection of goods and services, copyrights to protect logos and original works, trade dress to protect product packaging, as well as a combination of trade secret and confidentiality agreements to protect proprietary information and company “know-how” from leaking into the hands of competitors. The cannabis space represents a unique challenge due to conflicting state and federal law, but for the most part, IP protection is available to cannabis companies like any other company.
Cannabis Patent Examples
An example of a patent application directed to solvent-based extraction methods and equipment is titled “Process for the Rapid Extraction of Active Ingredients from Herbal Materials.” Claim 1 of the originally filed application states: “A method for the extraction of active ingredients from herbal material comprising: (i) introducing the herbal material to a non-polar or mildly polar solvent at or below a temperature of 10 degrees centigrade and (ii) rapidly separating the herbal material from the solvent after a latency period not to exceed 15 minutes.”
Claim 12 of the application covered any equipment designed to utilize the process defined in Claim 1.
Although now abandoned, the claims of this application were not necessarily limited to cannabis, as they were directed to extracting active ingredients from “herbal materials.”
Other patents involve non-toxic extraction methods utilizing CO2, such as Bionorica Ethics GMBH’s U.S. Patent No. 8,895,078, titled “Method for producing an extract from cannabis plant matter, containing a tetrahydrocannabinol and a cannabidiol and cannabis extracts.” This patent covers processes for producing cannabidiol from a primary extract of industrial hemp plant material.
There have also been patents granted to cannabis-infused products, such as U.S. Patent No. 9,888,703, titled “Method for making coffee products containing cannabis ingredients.” Claim 1 of this patent states: “A coffee pod consisting essentially of carbon dioxide extracted THC oil from cannabis, coffee beans and maltodextrin.”
— Alison J. Baldwin, Nicole E. Grimm and Brittany R. Butler, Ph.D.
Trademarks
Federal trademark protection is currently one of the biggest challenges facing cannabis companies in the United States. A trademark or service mark is a word, phrase, symbol or design that distinguishes the source of goods or services of one company from another company. Registering a mark with the U.S. Patent and Trademark Office (USPTO) provides companies with nationwide protection against another company operating in the same space from also using the mark.
The USPTO currently will not grant a trademark or service mark on cannabis goods or services. According to the agency, since cannabis is illegal federally, marks on cannabis goods and services cannot satisfy the lawful use in commerce requirement of the Lanham Act, the statute governing federal trademark rights. Therefore, extraction companies that only manufacture cannabis-specific equipment or use cannabis-exclusive processes will likely be unable to obtain a federal trademark registration and need to rely on state trademark registration, which does not provide federal protection.
However, extractors may be able to obtain a federal trademark on their extraction machines and processes that can legitimately be applied to non-cannabis plants. Likewise, companies that sell cannabis-infused edibles may be able to obtain a federal trademark for non-cannabis edibles if that company has such a product line.
Patents
A common misconception in the industry is that the USPTO will not grant patents on cannabis inventions. But, in fact, the USPTO will grant patents on a seemingly endless range of new and nonobvious cannabis inventions, including the plant itself.
Unlike the Lanham Act, the patent statute does not prohibit illegal activity. According to 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
For inventions related to extraction equipment, extraction processes, infused products and even methods of treatment with concentrated formulations, utility patents are available. Utility patents offer broad protection because all aspects related to cannabis extraction could potentially be described and claimed in the same patent.
There are already a number of granted patents and published patent applications related to cannabis extraction. Recently, U.S. Patent No. 9,730,911, titled “Cannabis extracts and methods of preparing and using same,” was granted to United Cannabis Corp. The patent covers various liquid cannabinoid formulations containing very high concentrations of tetrahydrocannabinolic acid (THCA), tetrahydrocannabinol (THC), cannabidiol (CBD), cannabinol (CBN) and combinations thereof.
Although the patent only covers the formulations, United Cannabis Corp. has filed a continuation application on methods for relieving symptoms associated with a variety of illnesses by administering one or more of the cannabinoid formulations claimed in Patent No. 9,730,911. This continuation application contains the exact same information as Patent No. 9,730,911 and is an example of how the same information can be used to seek complete protection of an invention via multiple patents.
Additional Protection
Despite the USPTO’s willingness to grant cannabis patents, there is currently an open question regarding whether they can be enforced in a federal court (the only courts that have jurisdiction to hear patent cases). However, since utility patents have a 20-year term, extractors are still wise to seek patent protection of the innovations now.
Another consideration in seeking patent protection for novel extraction methods and formulations is that the information becomes public knowledge once the patent application publishes. As this space becomes increasingly crowded, the ability to obtain broader patents will decline. Therefore, some extraction companies may benefit from keeping their innovations a trade secret, meaning it is not known to the public and creates economic value by way of being a secret. Properly crafted non-disclosure agreements can help ensure that trade secrets remain a secret indefinitely.
Regardless of the strategy extractors choose, IP protection should be a primary consideration for companies in the cannabis industry to ensure the strongest protection possible both now and in the future.
About the Authors
Alison J. Baldwin
Alison J. Baldwin is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. She has more than a decade of experience in handling complex patent litigation matters. This litigation experience includes trials in federal district court, as well as advocacy in forums such as the Patent Trials and Appeals Board, the International Trade Commission and private arbitration proceedings. Her litigation experience spans a diverse range of technologies, with a concentration in pharmaceuticals, medical devices and biotechnology.
Brittany R. Butler, Ph.D.
Brittany R. Butler is a patent agent with McDonnell Boehnen Hulbert & Berghoff LLP. She provides technological advice in support of validity, infringement and patentability analysis for clients in the biotechnology field. She has a master’s degree in patent law from the University of Notre Dame and a Ph.D. in medical sciences from the University of Florida.
Nicole E. Grimm
Nicole E. Grimm is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. She concentrates her practice on intellectual property matters, including patent procurement and enforcement in the biotechnology and pharmaceuticals areas. Her litigation experience also includes trade dress, copyright and unfair competition. In addition, she prepares and prosecutes patent applications, conducts freedom-to-operate and patent-landscape analyses and counsels clients on patent, trademark and copyright issues.
This article was originally published by Cannabis Industry Journal.