Patents & How They Get Issued
Cannabis + Patents 101, Part 2
In our last post, we talked about the different kinds of patents that can be applied to cannabis plants — plant patents and utility patents. In this post, let’s take a step back and look at what exactly a patent is, as well as the path it takes to get issued.
Patents & Inventions
In the United States, “a patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office,” an agency often referred to as the PTO or USPTO. These patents are effective within the United States, as well as its territories and possessions.
Here, an invention means something specific: a process, machine, article of manufacture, or composition of matter that is novel, useful, and non-obvious. In other words, it’s a new and unique tangible or manufactured thing (or a process) that has some kind of useful purpose, and it’s more than just a bunch of existing things all slapped together that someone’s trying to call “new.” (More on all of this in the next section.)
The primary value provided by a patent is its right to exclusion. This exclusion makes it possible for inventors to charge licensing fees to companies or individuals selling or using their product, and/or to have legal grounds to shut down the operations of other entities creating similar things. It’s also possible to require patent violators to pay damages after the fact (a.k.a sue for infringement), should the patent holder decide to take such action.
Requirements for Patentability
Any invention — whether it’s a newly cultivated plant or a high-tech, never-before-seen mop — has to meet four requirements in order to get a patent. To get a patent, the invention must be:
- Patentable subject matter: Is it a process, machine, article of manufacture, or composition of matter? This might sound like everything, but it excludes things like works of art (which are covered under copyright law) or logos and brand names (which are covered under trademark law).
- New / Novel: Is this invention unique? Has the patent been filed within one year of the invention entering the public domain? If it’s been more than a year, then it’s not new enough to patent.
- Useful: Does this invention have a useful purpose?
- Non-Obvious: Is this a non-obvious improvement to things that already exist in the public domain? For example, a 5-legged chair would be an obvious change to a chair, and certainly not a change that could be considered useful.
All of these criteria must be met in order for a patent application to be accepted. In addition, the finalized patent application must include sufficient enablement, or descriptions that would allow someone of a normal skill level to reproduce the invention. Per the USPTO, utility patents on plants require a plant material deposit as part of enablement, but plant patents do not.
Path of a Patent
Patents issued by the USPTO follow a similar process. First, an inventor — often with legal assistance — submits an application to the USPTO, where it is reviewed by a patent examiner. This person’s job is to make sure that the application meets all of the requirements listed above and also includes proper enablement.
To make sure that the application doesn’t cover something that already exists, examiners look for evidence of similar things that pre-date the application. These things are referred to as evidence of prior art. To make sure that application covers something new enough to patent, they also look for market entry date, or any other information about when the potentially patentable thing entered the public domain. For plants, that’s typically when they’ve been put up for sale, but evidence of “public use” may also qualify. (More on defining public domain in Part 3.)
Patent applications rarely get accepted the first time they’re submitted; lawyers and the examiner may go through many cycles of rejections and revisions before the patent is accepted. The overall process, from start to finish, ranges in cost typically from four to six figures in fees provided to lawyers and the USPTO.
Unlike other inventions, plant-based or not, cannabis has a particularly low amount of evidence of prior art, due to the history of cannabis prohibition. After all, what constitutes evidence of prior art in this context may be criminal evidence in another: to avoid punishment, much of that evidence has been hidden. Given this scenario, it’s not hard to imagine how, even with exhaustive research, the patent examiner(s) who approved the Biotech Institute patents simply did not have all the evidence they needed to reject the applications. This is why many see these patents as illegitimate, and also why the OCP is working diligently to collect as much cannabis chemical and genetic data as possible.
In our next post, the third and final part of Cannabis + Patents 101, we’ll discuss a couple more concepts that are key to understanding patent law: public domain & trade secrets.
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Credits
Writing & Diagrams
Beth Schechter, OCP Executive Director
Editing
Jen Hudyma, OCP Volunteer
Jesse Dodd, OCP Board Member
Legal Review
Dale Hunt, PhD., OCP Legal Advisor & Partner at Hahn Loeser
