Northern Lights. Pineapple Express. Blue Dream. For those who aren’t aware, each of these names refers to a popular strain of cannabis. It used to be taboo to say them out loud. But now that cannabis is rounding the home stretch and racing toward full legalization in Canada for recreational use, these strains and a whole host of others will soon be very widely known and used by consumers.
For any company that is scrambling to become part of this budding industry, the burning question is: what can be done to prevent others from stealing their intellectual property?
It’s true that Canada’s existing intellectual property laws were put in place long before the decision to legalize cannabis was approved. And, the Canadian government has no current plans to update or pass any new intellectual property laws. But this doesn’t mean the existing IP laws can’t be used effectively to protect cannabis strains in development. As with many other industries, when it comes to cannabis, what is really required is a creative legal approach.
What Can and Can’t be Patented in Cannabis Development?
Plants and other “higher life forms” by definition cannot be patented in Canada. To put it bluntly, any company trying to patent a new strain of cannabis won’t get very far, no matter how much time or money has been spent to make their case to the patent office. Despite this, there is good news regarding patenting cannabis. Most other innovations that either go into or come out of the development of a new cannabis strain can, at least theoretically, be patented. For example, this might include new:
- Molecules that have been extracted from the cannabis plant
- Substances that combine cannabis extracts with other ingredients
- Uses of cannabis extracts in the treatment of diseases or other conditions
- Methods of extracting active ingredients from cannabis plants
- Devices used to consume cannabis products
So while it may not be possible to patent a new cannabis strain directly, in some cases it might be possible to achieve the same effect indirectly by focusing on a different aspect of the enterprise. These might include novel formulations for cannabis delivery which might be more efficient or efficacious.
Plant Breeder’s Rights
This is not the end of the story. Part of the reason why plants are not patentable in Canada is that they are already subject to a separate and relatively obscure regime known as Plant Breeders Rights (PBR). Before your eyes light up, significant hurdles still remain. The PBR regime provides what are considered less robust rights than patent rights, focusing instead on restricting the buying and selling of protected varieties, seeds, or any other type of propagating material of a protected variety, without the permission of the breeder. A breeder must still be able to provide sufficient evidence of infringement to such rights. In addition, PBR protection, much like the patent regime, imposes a number of conditions on plant varieties that must be satisfied before any rights are granted. Most importantly, a plant variety must be new, distinct, uniform, and stable. It remains to be seen how these requirements will play out for cannabis strains trying to qualify for protection. Currently the Canadian Food Inspection Agency lists one pending application for PBR protection. But some early indications are that, at least for existing strains, the bar may be set quite high.
Consider Trademarking Your Product Name
Whether your company is growing plants, selling products or developing new medical indications, the value of a strong brand shouldn’t be lost in the weeds. The three strains mentioned at the outset of this post are arguably great examples of product branding. Each brand name is highly evocative and distinctive in its own way – in other words, ideal for registration as a trademark. It doesn’t matter that the brand names might have been in use for years because, unlike patents and PBRs, there is no requirement that a trademark be “new.” So long as a trademark is sufficiently distinctive, it should qualify for protection.
Having advised clients in intellectual property protection across multiple industries, it’s clear they all share one common trait: claimants must be proactive when it comes to understanding, acquiring, and ultimately enforcing their rights. It is no different for new entrants to the cannabis industry. Some efforts may result in essential IP protection; while other efforts may prove to be vain. My advice is to be proactive about protecting your IP and brand trademarks in this fast-growing industry. Because one thing is for sure. Any company that just sits back and does nothing will at some point see their intellectual property go, well, up in smoke.
We welcome your feedback and questions on the challenge of protecting the intellectual property of cannabis strains in development. Please post your comments on our LinkedIn page at: Dickinson Wright Canada, on Twitter at: @DWrightCanada or on our personal LinkedIn pages at: https://www.linkedin.com/in/eric-lavers-2b910878/ or http://linkedin.com/in/k-lance-anderson-b6175a2
About the Authors:
For questions concerning Cannabis Law in Canada please contact Eric D. Lavers at elavers@dickinsonwright.com or 416-777-2398. For more information on Eric, please visit his bio here.
For questions concerning Cannabis Law in the United States, please contact K. Lance Anderson at klanderson@dickinsonwright.com or 512-770-4207. For more information on Lance, please visit his bio here.
