Types of Cannabis Patents and Their Scopes
Cannabis + Patents 101, Part 1
July 24, 2018: this post has been updated, primarily to reflect the full scope potential of utility patents, and also to provide more accurate framing around the patents mentioned in the first paragraph.
In August 2015, a company called Biotech Institute, LLC, was awarded its first utility patent on the cannabis plant — #9,095,554: Breeding, production, and use of specialty cannabis. It’s since acquired two more patents — #9,370,164 and #9,642,317, each of which expand on the scope of the first one. Biotech Institute has more applications in the public queue, both in the US and internationally. These patents have caused an uproar in the cannabis community and unearthed no shortage of questions about the future of cannabis and whether or not it will turn into a monocrop, as corn has.
Just over a year later, in Dec 2016, a different kind of patent on the cannabis plant was awarded to Kubby Patent and Licenses, LLC — PP27475: Cannabis plant named Ecuadorian Sativa. While this patent covers only one variety with an unusually high amount of a terpene called limonene, some have argued about the actual uniqueness of this plant, and therefore the patentability of it. It has not, however, received the same level of criticism as the Biotech patents.
Why is this? If both of these patents cover cannabis plants, what’s the difference?
Plant Patents vs. Utility Patents
In the US, there are two primary types of patents that can be issued on a cannabis plant: a plant patent and a utility patent.
A plant patent covers the genetic makeup and resulting phenotype (including chemical) expressions of a single variety. The scope of the patent only covers the variety and its clones, which must be stable. Stable clones of the plant must match its parent, ensuring its uniqueness is not caused by disease, infection, or some other transitory occurrence. This kind of patent is designed specifically for plants and can be used for rhododendrons, hydrangea, or and many other kinds of plants. They do not cover tubers (e.g. a Jerusalem Artichoke, which naturally reproduces asexually), nor do they apply to plants found in an uncultivated state (e.g. growing out in nature all by itself). The Ecuadorian Sativa patent above is a plant patent, which is why its patent number starts with PP.
Utility patents, by contrast, are variable in scope and range in subject. This kind of patent can be applied to all different kinds of patentable things — plants, mops, pantyhose, machines, and processes. When you think of a “patent,” this is typically the kind of patent you think of; it holds the power to shut down operations of competitors with too similar of a product. In addition to covering the genetics and phenotype expressions of a single, stable, clonable plant, they may also cover genetic molecules, genetically modified seeds, novel compounds, cultivation methods, products made with the patented plant, new plants bred with the plant, and/or plants with similar attributes. The Biotech patents are these kinds of patents.
Differences in Patent Scope
Ultimately, the difference between these two patents has to do with their scope. As the diagram shows below, the scope of a utility patent far exceeds that of a plant patent: one covers a single variety and its clones, while the other can cover so much more, including plants with similar attributes. For cannabis, that means plants with similar chemical and morphological profiles, as well as products made from a patent-covered plant, including new plants bred with the plant.
Because utility patents range in scope and subject matter, it’s important to look at the specific claims and terminology to determine precisely where it lands. We’ll take a look at some of this terminology in a future post.
It’s also worth mentioning: cannabis may eventually also be registered using the Plant Variety Protection Act (PVPA), which is managed by the United States Department of Agriculture (USDA). At this time, however, no certificates for cannabis have been issued using this method yet: PVP certification requires a seed deposit, but the depositories do not accept cannabis seeds. This may change when cannabis becomes federally legal. When it does, OCP will be sure to write all about it — so stay tuned!
If you’re interested in learning more about the PVPA and a bit more about the patent types discussed here, check out Cannabis Patents: The 101 by John Mansfield. Full disclosure: John’s an OCP legal advisor, and no, he does not care that our blog posts have similar titles.
If you want to get the scoop behind why people are talking about cannabis and patents, read The Great Pot Monopoly Mystery by Amanda Chicago Lewis. It covers the full story behind the Biotech Institute patents — or at least, the fullest story we can get.
And to learn more about patents and cannabis, keep reading in Cannabis + Patents 101, Part 2: Patents & How they Get Issued.
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Got a question you’d like to see answered on Into the Weeds? Let us know! Send us a message or ask in the comments below. Please note that OCP cannot offer legal advice, but we can do our best to help inform the public about patent law and how it works.
Writing & Diagrams
Beth Schechter, OCP Executive Director
Jen Hudyma, OCP Volunteer
Jesse Dodd, OCP Board Member
Dale Hunt, PhD., OCP Legal Advisor & Partner at Hahn Loeser
Reggie Gaudino, Chief Science Officer at Steep Hill