Marijuana plant legally grown in Portland, OR. © Alice Carrier.

Kind of Legal, but Also Kind of Illegal:

Even though several states—including Oregon and Washington—have legalized both recreational and medical marijuana, marijuana remains illegal under federal law. Specifically, the Controlled Substances Act lists marijuana as a Schedule I substance, among other substances that the U.S. Drug Enforcement Administration (DEA) and U.S. Food and Drug Administration (FDA) consider to have no accepted medical use.

Pot is Patentable!

However, in a seemingly contradictory manner, the U.S. government has granted a surprisingly large number of patents for cannabis-related inventions. Examples of such patents include new strains of cannabis (e.g., U.S. Patent No. 9,095,554) and the medical use of cannabis (e.g., U.S. Patent No. 9,433,601). In fact, the federal government itself holds a patent for the medical use of cannabis (i.e., U.S. Patent No. 6,630,507).

Botanical illustration of cannabis plant. © Kirsten Holliday.

Pot-related Patents Could Still be Risky:

So does this mean you should patent your cannabis-related invention? The answer is a resounding maybe, largely due to uncertainty as to how the courts will treat cannabis-related patents. The biggest potential problem is that federal courts have subject matter jurisdiction over patent claims, so a patent owner suing for infringement would have to admit to being involved in the cannabis industry—which, of course, is federally illegal.

To Patent or Not to Patent?

On the other hand, this doesn't mean that you shouldn't file a patent application for your cannabis-related invention. It just means you should carefully consider the pros and cons of doing so, ideally with the help of a patent attorney. When considering whether to seek patent protection for your cannabis-related invention, you should ask yourself the following questions (note that questions 1–4 are applicable to all types of inventions, cannabis-related or not):

Marijuana plant legally grown in Portland, OR. © Alice Carrier.

1. Is your invention even patentable? To qualify for a patent, your invention must be new, useful, non-obvious, and more than just an idea. If you're not sure whether your invention meets these criteria, consult a patent attorney.

2. Is the cost of obtaining a patent worth it? Hiring a patent attorney to draft a patent application will generally cost you up to $10,000 in legal fees and possibly more, and there are no guarantees that the U.S Patent and Trademark Office will grant you a patent. Plus, you may be able to protect your invention in other ways.

3. Can you protect your invention in other ways? In some situations, it might make more sense to maintain trade secret protection for your invention, rather than trying to patent it. A trade secret is confidential business information that gives your company a competitive edge. If your product is not easily reverse-engineered and you can keep your invention a secret, then trade secret protection is worth considering.

4. Do you have the funding to enforce your patent against infringers? Litigation can be very expensive, which is why most cases settle out of court. But the road to settlement can be expensive, too. Remember that the U.S. Patent and Trademark Office does not enforce patents—it only issues them. The burden of actually enforcing your patent is on you, as the patent holder.

5. Should you claim your invention as being cannabis-related or not? Given the uncertainty of whether cannabis-related patents are enforceable in court, it may be best to avoid describing your invention as being specific to cannabis, if possible. That way, you won't have to worry about the legality of your own actions when suing someone else for patent infringement.

Of course, the above questions are merely meant to get you thinking about some of the main issues that arise when it comes to applying for a patent, cannabis-related or otherwise. If you're a tinkerer or innovator in the cannabis industry and you're curious as to whether you should seek patent protection for your new method, device, or strain of cannabis, then you should consult a patent attorney about your invention.

At Res Nova Law, our experienced intellectual property and business attorneys can help you assess the pros and cons of patenting your invention, walk you through the process of seeking patent protection, and help you enforce your patent rights against infringers.

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