Now that cannabis is legal in Canada, the protection of intellectual property is more important than ever.
Intellectual property (IP) includes everything from inventions, creations, designs, processes, art, and music, and even extends to pharmaceuticals and genes- and IP is protected via a patent, trademark, or copyright, depending on the type of intellectual property it is.
If you’ve ever wondered what the differences were between a patent, trademark, and copyright, or wanted to know more about patent law and what it means for the newly legalized cannabis industry, you’ve come to the right place.
We talked about the patenting process, plant breeder’s rights, cannabis gene patents, why none of the legendary, pre-legalization strains are eligible for IP protection, and so much more.
If you’d like to know more, Jennifer Marles is speaking at Intellectual Property for Canada’s Newest Industry, a one-day course on Feb. 21 in Richmond, BC.
Cannabis Life Network: Can you please tell me a little about your professional background?
Jennifer Marles: I’m a patent lawyer primarily, although I also do trademark work. My background is in biochemistry, so I’ve worked a lot on small molecule drugs, antibodies, different biological compounds, and chemical processes.
Could you give me a quick breakdown between a copyright vs. a trademark vs. a patent?
Patents are basically about protecting new functionality, so in the cannabis realm, a new method of purifying active compounds out of cannabis, or a new method of treating a disease using, say, a cannabinoid, would be covered by patents.
Copyright is really about protecting artistic expression, so if you write a book or paint a picture, you get protection for the way that you have expressed your idea, but you don’t get any protection for the idea itself.
Trademarks are about protecting your branding.
So patents are more around the process and methodology?
Yes. You can also patent, for example, a genetically modified cell of a plant, so it could be relating to the plant itself or ways of growing the plant to get a better yield.
You can also get what’s called Plant Breeder’s Rights (PBR) protection, which protects the actual strain of cannabis itself if you come up with a new strain.
That’s cool. So under plant breeder’s rights, do they have sole ownership of the particular strain?
Yes, they have the right to control the propagating material.
Like the seeds?
Yeah, so nobody else can reproduce the plant, basically.
So about how long does the patent filing process take on average?
Typically about 2-3 years would be normal, although it can be longer or shorter.
How long were you working as a lawyer before you started working with the cannabis industry?
It’s been mostly over the last couple of years that I’ve been more active in the cannabis space. I was filing trademark applications for a licensed producer about 3 or 4 years ago, but most of the interest, especially on the patent side, has been in the last couple of years as legalization has gotten closer.
What are some of the biggest intellectual property-related challenges for the cannabis industry?
I think it’s the same as every other industry, with the possible exception that this is kind of a totally new industry in many ways, but it’s really about protecting what you’ve come up with so somebody else can’t copy what you’re doing.
Before cannabis was legalized, was it a lot harder to get IP protection for cannabis?
I don’t think it’s changed the ability to get protection because the office wasn’t refusing things that were for cannabis before, but since legalization there’s been a lot more interest and investment in the sector.
So you mentioned how growers can protect their strains on the genetic side, but when it comes to protecting the names of their strains, that would be more of a trademark issue?
Yes, exactly, and if you set it up correctly, you can get a trademark and the plant breeder’s rights to protect the strain.
The trademark just protects the branding associated with it, it doesn’t actually prevent anyone from growing the same strain and calling it something different.
Is gene patenting common in the cannabis industry?
There have only been a few applications to date, but it’s going to become more and more important as people work on improving genetics. To qualify for protection, the variety has to be new, so all of the old, historic strains would not meet the requirements to secure plant breeder’s rights, so it’s only new strains that people are coming up with now that qualify.
So the older strains developed in the black market aren’t eligible for those protections?
No, because they wouldn’t be considered new.
Are you worried that if IP protections are too strong, it could impede innovation?
I think as parties acquire IP in the sector, you will start to see some conflict between them, definitely, but right now everybody is in the early stage of protection for the most part, and while there are some exceptions, cannabis is still a fairly new industry.
People are at the early stages so they haven’t started to really butt heads yet.
Do you think parties will increasingly butt heads as time goes on, similar to the pharmaceutical industry?
Yes, as the field gets more crowded.
Can you tell me about utility patents and how they apply to the cannabis industry?
There are all kinds of things that people could potentially get utility patents on, not just relating to the plant itself.
For example, breathalyzers for detecting cannabis in the systems of drivers, waste processing technologies for actually processing the cannabis waste and ensuring that no active compounds like THC are left after processing, all kinds of extractions processes for getting desired compounds out of the cannabis or isolating CBD or something like that.
There’s lots of different areas where people could seek protection.
With all the marketing restrictions for cannabis companies, does that make protecting their IP more important than ever?
On the trademark side, it makes your brand potentially not as valuable as something that can be used more prominently, so I think it’s harder for people to protect on the trademark side.
The regulations don’t really affect your ability to apply for patents or plant breeder’s rights, necessarily.
In your experience working with the cannabis industry, do you find you get a particular segment of it, like growers or maybe marketers, or is it everybody?
I’d say it’s a pretty broad spectrum, depending on who you’re dealing with. On the trademark side, you’re dealing more with the marketing and communications people, and on the patent side, you’re dealing more with the researchers and scientists who are developing the technology.
Could you tell me a little about “Prior Art”?
So in order to get a utility patent, you have to have something that’s new and inventive over everything that’s been done before, so one of the things we’re quite worried about when we’re preparing a patent application and it’s being examined by the office, is what sort of prior art is out there, and can we draft claims to get around that?
Do you ever have any issues where you’re filing a patent and you’re worried that even though it’s new, it’s not new enough? In other words, is there a minimum threshold for how different it must be?
Yes, there definitely is, but it can be a bit of a hard call and it can be subjective. It’s a hard thing to evaluate sometimes.
For patents, does a patent filed in Canada apply worldwide or only nationally?
You have to get a patent in each country that you want protection, so you can apply in all countries if you want, but if you don’t apply, you won’t have a patent there.
So if you don’t have a patent there, does that mean people in that country might be able to copy you?
Yes because you wouldn’t have any right to stop them
Are there any countries that you’ve found that have particularly strong patent laws?
I think they’re generally similar. Some countries, like Australia, tend to be more favourable to rights holders, but it’s hard to say one, in particular, is ahead. The USA would like to say that they’re ahead but that’s not necessarily the case.
Personally, what do you find most fascinating about the cannabis industry?
It’s the new surprises and new unexpected things you’d never thought of. Everything is unfolding very quickly and it’s a whole new industry that’s being brought into existence, so even things like I said like processing the waste involved in cannabis production- waste processing technology isn’t necessarily something that you’d think about when it comes to cannabis but it’s actually quite important.
Is it possible it might have applications as a biofuel or something like that?
I haven’t heard of anybody working on that but I suppose it’s possible.
What are some of the biggest things to remember about the patent process?
Hopefully, they’ll have an understanding of what the deadlines are because you generally have to file a patent application before there are any public disclosures- that’s really important to keep in mind- and then they’ll come away with a general understanding of the process to get a patent actually looks like.
Can you talk about some of the most interesting cannabis-related patents applications you’ve filed?
One of them was a cannabis breathalyzer for impaired driving.
Was that the government approved Drager DrugTest 5000?
No, it was a different one. It’s still in process because it takes a long time.
Did you have a favourite name of a strain when it comes to cannabis?
I don’t actually, no.
A lot of cannabis strains utilize a pun, play on words, or a reference to something or someone. Are there any issues when it comes to trademarks?
Yes, you could run into problems if you suggest that you’re endorsed by a celebrity or your strain name suggests the celebrity endorses your product, or if you’re too close to a different trademark.
I remember hearing a little while ago there was a strain named after Justin Trudeau, called Justin True-Dope.
Yeah, that could be a problem (laughs).
Was there any last thoughts you’d like to mention?
No, I think you covered it. It’s an exciting time to be involved in the industry and there’s a lot going on, and it’s going to be neat to see how it all unfolds.
Originally published Nov. 6, 2018. Updated on Jan. 24, 2018.
Featured image courtesy of Future Cannabis Project.