Marijuana Business Magazine July 2019

Marijuana Business Magazine | July 2019 98 Here’s the good news: The U.S. Patent and Trademark Office (USPTO) is not obligated by law to conform its patent procedures to U.S. Drug Enforcement Administration regulations and policy. In other words, marijuana’s illegal status under federal law does not restrict the issuance of patents, Fortin said. That’s understandable, because pharmaceutical companies historically have applied for patents before getting approval from the U.S. Food and Drug Administration, he noted. A quick search of the patent database shows that the USPTO has granted dozens of cannabis-related patents for innovations involving CBD extraction methods, cannabis-derived topical treatments and hemp stalk processing. Other patents cover non-plant- touching devices such as technologies to better control dosage ratios, vaping devices, indoor grow systems and more. “We’ve seen a steady stream of new and useful improvements and innovation,” Fortin said. Sometimes, applicants file broad claims that are narrowed down during a patent examination, Capuano said. Nonetheless, it’s possible to prevail, especially if you can show yours is a nonobvious idea. Capuano wrote in a recent blog post: “Because cannabis is old and many of its uses are known, at least anecdotally, it will be important for inventors to present data—including human data—showing a superior effect or surprising result.” In the case of combining two or more known substances, inventors often will need to show their combination achieves an unexpected “synergy,” Capuano said, which can be the case when the com- bined effect of two substances is greater than the sum of their individual effects. PATENTS AREN’T PRICEY Patent applications can be affordable for cannabis businesses, according to experts such as Capuano. “It doesn’t have to be expensive,” he said. “You can file for a few thousand dollars.” The key, he said: “Don’t have your lawyers do everything. You can do a lot on your own.” For example, Capuano said, the actual inventor likely has more knowledge than a lawyer about why the invention is novel, including literature in the relevant field—such as prior journal articles or earlier competitive products. Doing that research yourself goes a long way in reducing legal fees. Although much business these days is done by email, Capuano said that meeting a patent examiner in person can be helpful. The USPTO office is headquartered outside Washington DC, in Alexandria, Virginia. “It can be an extremely effective tech- nique to bring the inventor and an expert with you, sit in a small conference room in Alexandria and explain in person why it (the patent application) should be allowed,” Capuano said. WHAT TRADEMARKS PROTECT Unlike patents, which protect inventions, trademarks guard against consumer con- fusion. So, who should seek protection through trademarks? “Anyone selling packaged products where customer recognition is import- ant,” Fortin said. Think of it as protecting your brand. The USPTO refuses registrations of plant-touching trademarks such as edi- bles, concentrates and particular strain names. However, the 2018 Farm Bill eliminated restrictions on registration of trademarks for hemp products, Fortin said. “Hemp legalization has opened the doors of the trademark office.” Making & Mark your Protecting It Meeting with a patent examiner at the U.S. Patent and Trademark Office in Virginia can be an effective strategy.