Executive Summaries Sep 25, 2018
Cannabis-Related Innovations: Strategies for Protecting Intellectual Property
Protection of intellectual property ("IP") rights is a key factor in a company’s efforts to obtain or to maintain a competitive advantage. The situation is no different for companies in the cannabis industry. This article offers an overview of the various strategies for protecting IP that apply to cannabis-related innovations.
The Canadian and American patent offices regularly grant patents for cannabis-related innovations, regardless of whether cannabis is legal. Patent examiners apply the same legal standards to the examination of a patent application for a cannabis-related invention as they do to a patent application for any other type of invention. In order for an invention to be patentable, it must be new, non-obvious and useful.
Patent applications and patents covering cannabis-related inventions appearing on the patent office databases relate to various technologies, including, for example:
- processes for extracting or processing the active compounds present in cannabis, such as cannabinoids and terpenes;
- processes and equipment for cultivating cannabis and monitoring cannabis plant inventories;
- cannabis-based formulations, products for smoking, extracts, oils, resins, edibles, nutritional supplements, beverages, cosmetics, animal feed and veterinary products;
- vaporizers, nebulizers, inhalers, rolling papers, beverage dispensers;
- use of the active compounds of cannabis in treating diseases or health problems, such as cancer, pain and epilepsy; and
- procedures for detection and chemical analysis of cannabis.
TYPES OF PATENTS AVAILABLE IN THE UNITED STATES
In the United States, there are two types of patents for patenting cannabis plants: the "standard" utility patent and plant patents, a special category of patents covering plants. To be patentable by a "standard" utility patent, the plant must be the product of human ingenuity, whether by selective selection or by genetic engineering. A cannabis plant that is found in nature and is therefore not the product of human ingenuity is not patentable. A plant patent, on the other hand, offers narrower coverage and is limited to plants that are propagated asexually, that is, that derive from cuttings and not from seeds.
Utility patents and plant patents can enable their owner to secure market shares and generate higher profits during the term of the patent by preventing competitors from using the protected plant.
WHAT IS THE SITUATION IN CANADA?
In Canada, it is not possible to protect plants using a utility patent since Canada prohibits protection for higher life forms through patents. In addition, there is no Canadian counterpart for the type of plant patent that is available in the United States. However, it is possible to obtain patent protection in Canada using a utility patent for genetically modified plant cells (transgenic cells). The Supreme Court of Canada has recognized that a patent to cover genetically modified plant cells was infringed by a plant containing such genetically modified cells .
Protection by plant variety rights (plant breeders’ rights) is also available in Canada and the United States. This type of protection gives the breeder of a new variety of plant exclusive control over the propagating material (including seeds, cuttings, divisions and tissue culture) and harvested material (cut flowers, fruit, foliage) of a new variety. With these rights, the breeder can choose to become the exclusive marketer of the variety or to license the variety to others. In order to qualify for these exclusive rights, a variety must be new, distinct, uniform and stable.
Companies in the cannabis industry have access to several ways of protecting their IP rights. Whether the subject matter for which protection is sought is the product itself or the methods of use, it is essential to take the necessary measures to provide protection in a cannabis industry that is rapidly growing and becoming highly competitive.
 Monsanto Canada Inc. c. Schmeiser,  1 R.C.S. 902, 2004 CSC 34