It’s been a while since we talked about patent protection on the blog, but a recent consultation reminded me that an introduction to the different types of patents that may be available could be beneficial. Here in the United States, there are three broad categories of patents, all of which are governed by Patent Act (or formally Title 35 of the United States Code). I will cover everyone below.
At its base, a plant patent protects a new plant created by a person. It can be granted to anyone who:
invents or discovers and reproduces asexually any particular and new plant variety, including cultivated sports, mutants, hybrids, and newly found seedlings, with the exception of a tuber propagated plant or a plant found in a non-cultivated state. 35 USC § 161.
Arguably the easier patent to obtain (the application only requires an “as complete as possible” description), it offers limited practical protection. In a patent infringement case, the patent owner would have to prove that the defendant reproduced the plant asexually or without seeds. Without direct evidence of theft through testimony or the like, it can be difficult to prove a violation.
A utility model encompasses “every new and useful process, every machine, manufacture or composition of matter or every new and useful improvement thereof”. 35 USC § 101. Utility models provide protection for both sexually and asexually reproduced cannabis plants, as well as other formulations made from that plant. It is for this reason that it is the most common type of patent granted. According to estimates by the USPTO, up to 90% of the patents granted in 2016 were utility models.
The application process is much more complicated – there is a much more thorough written description requirement and a new “activation requirement” – the plan must allow other “professionals” to manufacture and use the facility. There is also the “significantly different characteristic analysis”, in which the applicant has to prove that the plant is not just a natural product – the substance has “clearly different characteristics” than those found in nature.
A design patent includes “any new, original and decorative pattern for an item of manufacture”. 35 USC § 171. If a utility model protects the way something is used and works, a design protects the way something looks. This is largely not applicable to the needs of the industry.
Although patent protection has been generally available for some time, in this post we have explained why patent protection is subject to restrictions. When it comes to cannabis patents, the courts may find that the illegality doctrine requires them to move away from patent infringement claims because the patent holder “would ask a federal court to protect their illegal business from unlawful competition from another illegal company.”
The good news is that in the first patent infringement litigation ever filed (which we covered in detail here, here, here, here, and here), the doctrine of illegality was not mentioned at all (at least during its relatively brief pendency). . Regardless of the defects, we always encourage our customers to protect their intellectual property as much as possible. If you are looking for patent protection for cannabis, our intellectual property team will be happy to help.