Are Cannabis Patents Enforceable?
Although cannabis is federally illegal under the Controlled Substances Act (CSA), the USPTO is still issuing cannabis-related patents. Unlike trademarks, patents do not require use in commerce. Therefore, by granting these cannabis-related patents, the USPTO is not impliedly permitting or authorizing federal sales of cannabis-related products.
Many states have legalized cannabis in some capacity, and thus, cannabis-related products, services, methods, etc., are being sold in such states while having the possible benefit of patent protection. In the future, the owners of these patents may want to enforce their cannabis-related patents against competitors in those states to leverage their exclusive right. It is noted that several cannabis-related patents have been brought into federal courts over the past decade, but none of these courts have yet enforced a cannabis-related patent and demanded the infringer pay damages. Nevertheless, recent federal district court decisions have shown that the courts are considering enforcement of cannabis-related patents:
- United Cannabis Corp. v. Pure Hemp Collective, Inc.: In 2019, the U.S. District Court for the District of Colorado held in 2019 that a cannabinoid liquid formulation is directed towards patent eligible subject matter.
- Canopy Growth Corp. Gw Pharm. PLC: In 2021, the U.S. District Court for the Western District of Texas conducted a claims construction hearing agreeing with defendant’s claim interpretation. Plaintiff has since appealed this decision.
- Original Resinator LLC v. TTT Innovations LLC: The U.S. District Court for the Central District of California scheduled a jury trial for 2022 to determine patent infringement, but ultimately the parties settled before trial.
Though it is still unclear whether a federal court would enforce a cannabis-related patent and demand the infringer pay damages, obtaining cannabis-related patents is possible and may have value. For example, a patent owner could monetize their invention through licensing agreements where cannabis is legal (inside and outside the United States based on patent coverage pursued). Additionally, if federal legalization of cannabis occurs during a cannabis-related patent’s lifetime, then the cannabis-related patent may be enforceable just as any other patent at the federal level.