Among the host of uncertainties they face, cannabis industry entrepreneurs might wonder if they can patent marijuana products — after all, they are still illegal at the federal level. It may come as a relief then, to find out that the US Patent Office has been issuing cannabis-related patents since 1942. Nearly 1,500 cannabis patent applications have been filed, more than half in the last 25 years. About half of the requests were approved and some of those have expired, leaving about 500 currently active cannabis-related patents.
David Cohen, PhD, an independent patent agent in Oakland, California, works with medical device and cannabis patents. Here, we ask him what types of patents are being issued, who’s filing for them and where the biggest opportunities in cannabis-patenting may be. Contact him at firstname.lastname@example.org
What areas should a potential cannabis patent filer explore?
There are three large and partially overlapping categories: (1) cannabis compositions, drug formulations, and methods of preparation, (2) characterization of cannabis compounds in terms of how they engage with human endocannabinoid receptors, and (3) methods of treating diseases with cannabinoids.
Who’s active in this area now?
Dozens of small and midsized companies have been filing patent applications, and they account for the current rate of growth in this space.
What about Big Pharma? Philip Morris?
Nothing from Philip Morris. Early on, big pharmaceutical companies, universities, and research institutes were leading the charge, but their collective activity actually peaked in 2006-2007, and has been steadily declining since then.
Why isn’t the pharmaceutical industry more active now?
I see this as a wave of innovation that crested and is now subsiding, a common pattern. The role of hormone and neurotransmitter receptors began to be appreciated in the 1970’s by academics and the pharmaceutical industry, and has since become a critical to understanding the physiology of a drug. When discovered in the 1990’s that cannabinoid compounds interacted with the so-named endocannabinoid receptors present in cells of the human body, a large pharmaceutical discovery machine was already in high gear. The industry has vast expertise in chemistry, and quickly figured out the main compounds, how to extract them, and how to make them. The pharmaceutical industry can get back into it quickly if they want to, particularly by making acquisitions.
Have questions about the legal status of cannabis had an effect on patent activity?
The Dept. of Justice’s view of cannabis has had little apparent effect on patent activity. Some of the basic work on the medical potential of cannabinoids, in fact, was patented by the US Dept. of Health and Human Services (US 6,630,507) in 2003. I don’t believe that the legal status of cannabis has constrained pharmaceutical industry patenting, but the opening of markets by legalization and by the entry of cannabinoids into medical practice could very well stimulate new activity.
Where are there the biggest opportunities for those who want to file patents in the cannabis industry?
Small and midsize companies have spotted various opportunities. The three subject matter categories noted earlier are still active, particularly the therapeutic use of cannabinoids. New niches and areas of specialization have opened up, such as (1) specific cannabinoid and terpene profiles and formulations that have more efficient biological availability for use in beverages, foods, and medicine, and (2) industrial scale fermentation approaches to production (i.e., not plant-based) that can potentially deliver specific, quality-assured cannabinoid profiles. I am not aware of any patent infringement lawsuits filed by big pharma against smaller companies to curtail their innovative or commercial activity.
Can cannabis plants being patented?
Yes, this is presently a small area of activity, but may also represent opportunity. Plants can be patented in two ways, by way of “utility patents” (like 95% of all patents) or by way of a separate “plant patent” category. Utility patents are much stronger; plant patents are narrowly focused on a single “parent” plant and its direct descendants. By my count, there are currently only 5 US plant patent cases (4 pending applications, 1 issued patent), and 11 utility plant-directed patent cases (8 pending applications, 3 issued patents). Two companies are currently the main players in plants: the plant-focused Biotechnology Institute (Los Angeles CA) has 3 issued patents as well as 2 pending applications, and GW Pharmaceuticals (UK) has two plant-focused applications. GW is notable for having the largest cannabis-directed portfolio (80+ US cases) of all companies in the space, and is particularly focused on methods of treating diseases.