We have written many posts on marijuana branding and marijuana trademarks. In short, federal registration for trademarks on marijuana goods is generally not an option, leaving State trademark registration as the only avenue for most trademarks in this industry. This is because Section 2(a) of the Lanham Act (basis for federal trademark law) bars registration for “immoral, deceptive, or scandalous matter.” The Patent and Trademark Office (PTO) has said that because marijuana is illegal under federal law, marijuana trademarks constitute immoral or scandalous matter.
Federal patent law, however, does not contain the same prohibition of “immoral” material. Theoretically, an inventor could get a patent issued for an illegal product.
But what exactly would one be patenting and what rights come with that if, for example, one wanted to patent a cannabis strain?
Plant patents are governed by 35 U.S.C. 161. These patents are granted to those that have invented or discovered and asexually reproduced a distinct and new variety of plant. The patent is good for 20 years from the date of filing the application. Patents are exclusionary rights. They exist for a limited amount of time so that inventors have time to make money off their invention before others are able to copy that invention and undersell the inventor. The idea is that society wants to incentivize invention, so we grant inventors a limited monopoly and they can do with that what they want. Maybe they build the factory themselves and begin producing their patented products or maybe they license the right to a third party. Maybe they sit their patent and try to sue others for using the patented product (i.e., the infamous patent troll).
So, it isn’t absurd to imagine that the Patent and Trademark office could grant patents for cannabis strains. In fact, there are multiple marijuana patent applications already in the hopper, like this one and this one (though the latter one also includes some method patents). The PTO can take years to actually issue a patent, so it appears that all of the modern plant variety applications are published in the pre-grant phase — meaning, the PTO has not actually issued the patent. Nonetheless, this has not stopped some companies from sending letters to start-up cannabis businesses claiming that the patents have been issued and demanding a licensing fee, but in truth they are not sufficiently advanced in the process to grant exclusionary rights to their holders.
But even if these patents issued, what could the prosecuting party actually stop someone else from doing? The names of the plants themselves are not patented, but the genetics are. If I create a new strain and call it “Pagan Feast” and got a patent for it, I would not be able to stop someone in a state where I did not have any trademark rights to Pagan Feast from using the Pagan Feast name for a different marijuana strain. However, I would be able to use my patent to stop someone in all fifty states from selling my specific genetic product under any name. If I wanted to have exclusionary rights regarding the name itself, I would need to obtain trademark protection in as many states as possible, which, unlike patents, requires that I actually be doing business with that name in each state in which I want protection.
Questions around marijuana patents remain. Will the PTO actually issue plant patents for marijuana? Time will tell. These applications still need to meet the standard patent requirements of utility, novelty, and non-obviousness. Getting a patent is difficult and the majority of applications fail due to errors in the applications themselves. Nevertheless, the fact that it takes so long to get a patent may actually bode well for those in the marijuana industry who have already applied. By the time these applications are actually reviewed, we may be in a more favorable political climate where the PTO has no reason to stand in their way. Patents may soon be joining trademarks, copyrights and trade secrets, as an effective way to protect your cannabis intellectual property.