Four years ago, we wrote about the opportunities for patenting cannabis inventions. At the time, patenting cannabis technology was a novel idea.
Since that time, the cannabis industry has grown exponentially. And, several companies have developed cannabis technology. Most notably, Colorado-based ebbu has opened up a whole new area of formulated cannabis products, which use specific combinations of cannabinoids and terpenes to optimize the users’ experience.
Similarly, we predicted that a cannabis beer industry would emerge, creating a landscape for cannabis beer patents. Here’s the simple logic:
Recently, several players have entered the cannabis beer space. Below are updates that have been in the recent mainstream news.
Cannabis beer update: Hi Fi Hops
On August 8, 2018, Business Insider wrote an article about a new beer (Hi Fi Hops by Lagunitas/Heineken) that is brewed with marijuana. See also The Wall Street Journal. The Lagunitas brew is currently available in two varieties. The beer is available in two varieties, neither of which contain alcohol. One is purely THC, with 10mg per can (roughly the same as you’d find in an edible like a gummy); the other is a hybrid variety with 5mg of THC and 5mg of CBD.
CERIA – Cannabis Beer by Blue Moon’s Inventor Keith Villa
Heineken is not the first beer company to develop cannabis beer. In January of this year, Forbes Magazine reported that Keith Villa, inventor of Blue Moon left Molson Coors in order to develop a new cannabis beer company called Ceria. According to Ceria’s website, Mr. Villa’s new creation will leverage the proprietary cannabinoid science of ebbu (see above).
The partnership between ebbu and Ceria is interesting. Combining the idea of (A) cannabis beer with (B) purposefully designed cannabis formulation will allow Ceria to create next generation cannabis beer products that do not suffer from the inherent chemical variability of cannabis plants.
Province Brands – Brewing with Waste Material
Other companies appear to be pursuing a more conventional approach of using cannabis plant material in the brewing process. One notable spin on a conventional brewing approach comes from Michael Wendschuh and Province Brands.
Province Brands uses cannabis waste material as an ingredient within the brewing process. They are literally brewing beer with garbage. According to an article in the Guardian, Province Brand’s beer “offers an alternate use for what is essentially a waste product for the industry.” According to Michael Wendschuh, “we take [the waste] off the grower’s hands, saving them the cost of hiring a licensed disposal company to dispose of them.”
Psilocybin Technology – Magic Molecules from Magic Mushrooms
Recently psilocybin (the active ingredient in “magic mushrooms”) has received considerable attention. Professor David Nutt and his team at the Imperial College of London recently published an article in Scientific Reports about “Psilocybin for treatment-resistant depression: fMRI-measured brain mechanisms.” The study demonstrated that administering the psilocybin resulted in “pushing [the brains of depressed people] out of their depressive states.” This effect is analogous to electroshock therapy — where a person’s brain is effectively rebooted.
Although psilocybin is currently a schedule I drug, the laws may be changing. Recently, the Huffington Post and many others reported that California may legalize (or decriminalize) psilocybin. In addition to Dr. Nutt’s work in treating depression, the Financial Times reported that Compass Pathways will soon test it for therapeutic value as an antidepressant. Scientists at John’s Hopkins University are also studying the use of psilocybin for treating anxiety and depression.
Is New Psilocybin Technology Patentable?
Psilocybe Cyanescens is one of about 200 species of naturally occurring “magic mushrooms” that contain the molecule psilocybin
About a year ago, we posted an article about Patenting Mushroom Inventions. Our thesis was simple. Many types of mushroom (or fungi) inventions could give rise to patentable subject matter. Such patentable subject matter can be divided into the following categories: Compositions of matter; Methods or Processes; Plants or Living organisms; and Machines or Devices. Of these categories, we explained that composition of matter inventions were almost certainly the most valuable kind of mushroom inventions.
The above articles signify the beginning of a new field — psilocybin technology. Developing a new field often involves rapid innovation and pioneering inventions. In other words, new industries often develop first-in-kind technologies as opposed to optimizing or refining existing technology. We recently saw this sort of innovation in the cannabis space. Below, I have compared the development of the cannabis industry with the impending emergence of the psilocybin industry.
Comparing the Patentability of Psilocybin Inventions with Cannabis Inventions.
The present psilocybin situation shares many similarities with the recent explosion of the cannabis industry. Here’s why:
Not long ago, cannabis (a naturally occurring plant) was demonized as an extremely dangerous drug with no medicinal or therapeutic value. It was criminalized in about 1970 under the controlled substances act as classified as a Schedule I Controlled Substance.
Then, people realized that this characterization of cannabis may have been somewhat mistaken.
Then, the regulations on cannabis became less strict. First, medical cannabis. Then, recreational cannabis.
Now, we have an enormous recreational and medicinal cannabis industry.
This young industry is rapidly developing better, safer, and more effective cannabis technologies. For example, the cannabis technology leader ebbu, LLC has created a whole new category of formulated cannabis products with effects unexpectedly different from the plant itself. New, man-made cannabis inventions like those are patentable.
Opportunities for Breakthrough Technologies
The Psilocybin and cannabis fields both share three critical features. First, both are products of nature. Second, those natural products were criminalized by 1970’s laws, based on 1970’s reasoning. Third, that criminal status chilled innovation. As a result of these three facts, many naturally occurring substances (in both “magic mushrooms” and cannabis) were understudied and underdeveloped. Accordingly, the these industries remained stuck in about 1970. Until recently, the state of the art for cannabis was smoking plant matter. The state of the art for psilocybin is almost exclusively eating mushrooms.
The situation for psilocybin technology is slightly different from cannabis. We have the benefit of history. We have been watching the cannabis industry develop. Accordingly, we have a pretty good analogy for how things will play out.
Most likely, the state of the art will evolve beyond eating mushrooms and exclusively focusing on only one molecule. Soon, scientists will recognize that those magic mushrooms have dozens of pharmacologically active magic molecules that can be purposely formulated into safer, more effective, and more reliable products. These advances will arise from human innovation, making them patentable.
Onnit’s New Mood – A New Nutraceutical Composition Comprising Natural Ingredients
I just came across New MOOD. New Mood is a supplement made by Onnit. Onnit claims that New Mood improves your mood and reduces your mental stress. Sounds awesome, right? I think so, especially because I am interested in the patentability of nutraceuticals and nootropics.
After a quick look at the New Mood technology, my two big questions are as follows:
1. Could Onnit patent this?
2. Does New Mood really work?
1. Patenting a combination of known, naturally occurring ingredients
From what I can tell, New Mood is a combination of known, naturally occurring ingredients. Normally, so-called “products of nature” are not patentable. (A product of nature is not new. A product of nature is not “man made.”)
However, in the case of New Mood, the naturally occurring ingredients are combined into a specific formula that is NOT found in nature. Accordingly, it is “man made” and (potentially) new.
2. Does New Mood Provide Unexpected Results?
It’s possible that the answer to question #2 determines the answer to the question of patentability. Here’s what I mean: If New Mood really is a “gamechanger,” like Onnit claims, then that “game changing” achievement could help them earn a patent on the composition.
Provided that the New Mood composition is “new,” then the question of patentability would probably turn on “obviousness.” Here, I think the question of patentability would depend on whether this particular combination provides some sort of unexpected results when compared to the known properties of the ingredients.
I’m eager to learn more about this invention. Is it a”game changing” technological advance or a clever marketing campaign? The former is probably patentable. The latter is probably not.
Nootropics are also called “smart drugs” or cognitive enhancers. The term “nootropic’ covers drugs, supplements, or other substances that improve cognitive function. In particular, these substances improve so-called “executive functions” such as memory, creativity, or motivation.
Examples of known nootropics include caffeine, modafinil, the racetams (e.g, piracetam, aniracetam, phenylpiracetam), nicotine, amphetamines, various, psychedelics, and many plant derived extracts and supplements.
Recently, ebbu, the leader in engineered cannabis products has figured out how to make formulations that enhance creativity and focus without the undesired side effects often associated with cannabis.
The Neurohacker Collective offers a product called Qualia, which they define as “a supplement stack with 42 ingredients that will optimize every major system of your brain so you can be more productive and create more impact in the world.”
In an article from Cognitune Smarter Health, they say, “Smart pills and nootropics for brain function support exist in various forms. Most of them are effective in boosting specific areas of mental cognition.”
Research and development in nootropics appears to be growing rapidly. And rightfully so. Who wouldn’t want a simple way to enhance cognitive function? Now, the question on my mind: Can we patent these nootropics?
Patenting Nootropic Innovations
Nootropic research interests me for two reasons — one personal and one professional.
Personally, I like the idea of supercharging my brain. Taken to the extreme, is there a supplement that would help me learn things faster? Could I learn Brazilian Jiu Jitsu techniques in a few minutes instead of a few months? Ideally, I would like to learn things as rapidly as my 8 month old.
Professionally, I like the field of nootropics because of the opportunities for creating patentable subject matter.
Nootropics can be claimed as compositions of matter. Compositions of matter patents are my favorite because they define the invention chemically. (I love chemistry and chemical patent law). Also, I think composition claims are among the strongest claims available to an inventor because they cover all uses of the claimed composition.
Patenting New Formulations of Naturally Occurring Compounds
I’m also interested in nootropics because many of them appear to be found in nature — in plants and fungi. That creates some interesting questions of patentability. Here’s why: A natural product cannot be patented. It’s not new. It has been around forever in nature. And under US patent law, only new things can be patented.
However, while the naturally occurring form of the nootropic cannot be patented, newforms or formulations of the nootropic can be patented. Accordingly, if researchers discover a cognitive enhancer in some naturally occurring mushroom, they could not patent the mushroom itself. (It’s not new). But, they could probably patent purified forms of the nootropic and/or new formulations using that nootropic. They could also pursue new methods of purifying the nootropic and/or formulating it. In each case, the critical question is whether the “invention” is the product of human engineering. (For a related discussion, see the uproar over Nestle and its patents related to the Fennel flower).
Likewise, a company like Neurohacker could seek patent protection for their Qualia product– assuming that their combination of 42 ingredients is a new combination. Provided that the combination is new, the major hurdle to patentability would probably come down to whether that combination would have been “obvious” when the Neurohacker researchers made it.
At a high level, I cannot think of too many 42-member combinations that are “obvious” to formulate without some sort of guidance. Nevertheless, the invention would be evaluated at the U.S. Patent and Trademark Office by the legal standard of obviousness. Under that standard, I suspect that the inventors could demonstrate that their combination is not obvious by providing evidence about how that combination optimizes every major system of the users brain and/or makes the user more productive and/or allows the user to create more impact in the world.
Food and food technology are both patentable. Patenting a new invention is one way for a firm to stay ahead of competitors. Many inventors never consider patenting food technology. Many wonder whether food is patentable at all. To be clear, anything new and not obvious is potentially patentable. Including food and all of the technology relating to food. For example, methods of preparing food, equipment, software, and novel compositions. Below are five current examples of exciting technologies and innovations within the food industry.
1. Patenting Sous Vide Technology
Sous vide is a French technique where cooking is done through the use of an immersion circulator. Food is placed into a plastic bag, air is removed, and placed into a water bath at a precise temperature. The immersion circulator keeps the water at a precise temperature gently cooking the food all the way through.
The technology is expensive and was relegated mostly to restaurants. However, a number of retail products have become available (e.g., Joule, Anova, and Sansaire) that are relatively affordable and growing in popularity.
New food preparation devices are patentable
While the general technology is not new, improvements made to the technology are new. These new advances are potentially patentable, as long as the advances are new and not obvious.
2. Patenting Smaller Versions of Large Scale Equipment
Larger scale, industrial equipment is often very expensive. Using this technology for producing foods on a smaller scale for the average cook is often cost prohibitive. Improving equipment for cost effectiveness is patentable.
For example, a conche (Indi Chocolate) is a machine that distributes cocoa butter within chocolate to develop flavor and texture. The process is so important, that many chocolate manufactures keep their conching process secret. See https://indichocolate.com/collections/chocolate-making-machines/products/wonder-grinder-model-2
Products like these may seem niche, but there is a growing trend amidst home cooks and chefs wanting to have control over the quality of their ingredients. Improvements to existing technology may focus on either home or restaurant use. Many home cooks may not want to make their own chocolate, but smaller restaurant, cafes, or bakeries are potential users.
3. Patenting Phone Apps and Devices for Food Preparation
Within the context of food technology, smartphones are used for setting a timer, for grocery shopping, and organizing recipes. But smartphones are rarely for preparing food.
For example, a thermometer that plugs into your phone. A growing trend is integrating smartphone technology into appliances. Samsung has a new oven connecting to a smartphone allowing controlling temperature, measuring food weight, and calculating calories.
4. Patenting Gluten Free Products and Compositions
Gluten free diets are a growing trend. Most grocery stores have specific gluten free sections. Maintaining gluten free diet is difficult because gluten is found in most foods. For example, wheat is used as part of the fermentation process for soy sauce. Many foods contain flour as a thickening agent and for maintaining food’s structure. Cross contamination becomes a risk for naturally gluten free foods exposed to gluten comprising foods.
Gluten free food technology could especially be valuable in the area of baking because gluten provides pastries, breads, and pizzas their structure. Gluten free technology is patentable by patenting the chemical composition. The chemical makeup of these products must be unique, i.e., never disclosed before.
5. Patenting Novel Food Compositions, Such as Aquafaba
Vegan diets are not just for ethical reasons but also for food sustainability reasons. Maintaining a vegan diet is difficult because animal based products are used in many foods. Eggs have many chemical properties that are hard to find in other ingredients. Some attempts for replicating these chemical properties are using various starches or other hard to find substitutes. But a recent discovery could change everything. Aquafaba – the liquid from cooking legumes, like chickpeas – has similar properties as egg whites. Experts believe that the protein and starches in Aquafaba mimic the proteins in egg whites. For example, whipping Aquafaba to make meringue. Developing Aquafaba technology could benefit millions of vegans by producing protein compositions. Advances in this area is patentable. New forms of Aquafaba could give rise to patentable compositions of matter.
Conclusion – Food and Food Technology is Patentable
Food technology is an enormous and growing industry. Even more remarkable–this industry is just beginning to tap into the opportunities available for protecting and monetizing technology by using the patent system Patents provide a powerful tool for those creating new and not obvious inventions.
This post was written by Alex Kong, JD. Mr. Kong is an attorney with a background in chemistry and specialty in food technologies.
Yes, a brewer can patent beer. Similarly, the inventor could pursue patents for new methods of making beer or new devices for making beer. Those patents give the inventor the right to exclude others from making or using the invention without permission. The idea is that the inventor should have the right to own the idea for a limited time in exchange for bringing it into the world.
The rapidly evolving Extreme Brewing community embodies innovation. Brewers are constantly seeking out new— different — beers. Accordingly, the industry is constantly inventing new technology.
Beer can be patented as a composition of matter, giving the brewer ownership of that recipe
To receive a patent on beer, the inventor (i.e., the brewer) would benefit from claiming it as a new composition of matter. The brewer should draft patent claims, defining the beer and showing its inventive features. The claims should emphasize how the new beer differs chemically from all others that came before it.
For example, the beer could differ on account of using different ingredients. Or, it could differ on account of selecting particular varieties of amounts of traditional ingredients. For example, particular types and amounts of hops, herbs, spices, yeasts, or barley give rise to unique chemical properties. Alternatively, a brewer may add new ingredients, such as cannabis to create new combinations of molecules. Those sorts of innovations would justify a patent on the new composition of matter. For a brewer who creates something truly innovative, claiming the invention chemically could provide the best way for capturing the value of that contribution.
A chemical invention from start to finish
Each of the components used to brew can be defined chemically. Then, during the brewing process, these ingredients undergo a variety of chemical transformations. For example, during fermentation, yeast converts carbohydrates into ethanol and carbon dioxide. Ultimately, the brewer enjoys a finished product, having its own chemical composition.
Often, new foods and beverages are readily distinguished based on their molecular components. Each of these distinctions provides an opportunity for patenting the invention. The brewer creates inventive subject matter every time he deviates from traditional recipes or methods. Recently the TV Show Brew Dogs discussed adding kelp to beer. Dogfish Head Brewing recently introduced a beer with garlic. And Ballast Point is currently serving a beer called “Red Velvet,” which is made with beets and chocolate.
Ballast Point is serving a “Red Velvet” Beer made with beets and chocolate
An inventor of new (different) beer ideas can apply for a patent on those ideas.
Why bother patenting beer?
Many brewers scoff at the idea of filing a patent. Or they find the idea immoral or untrue to the community. Practically speaking, filing a patent application (on any technology) only makes sense if the invention is truly new and better. (Something known or obvious cannot be patented). If the invention meets those criteria, then filing a patent application would give the inventor the option for preventing competitors from practicing the invention. The inventor/patent holder would get to decide who gets to use the invention. For example, a small brewer with a patent could prevent (or demand royalties) if a large commercial entity began copying the invention.
What’s the process for patenting beer?
After drafting claims, the inventor would file them as part of a patent application at the United States Patent and Trademark Office (“USPTO”). During patent prosecution at the USPTO, the application would be examined by an examiner. The inventor would have the opportunity to explain why the beer is both new and innovative (i.e., nonobvious). After convincing the examiner of the newness and nonobviousness of the beer, the examiner would allow the claims. The inventor would then receive a patent on the new beer composition.
Recently the Huffington Post published an article on an ingenious new food that gets kids to eat their broccoli. When I see achievements like this, I always wonder whether the inventor filed a patent application on the new technology.
Foods are patentable, just like any other composition. The patent laws do not distinguish a food simply because we eat it. Rather, the law would classify food as a composition of matter. At the United States Patent and Trademark Office, food recipes would probably fall under Patent Class 426: “Food or Edible Material.”
A new food can be patented as a composition of matter.
Food is Patentable as a Composition
Under U.S. Patent law, an inventor can patent a process, machine, manufacture, or composition of matter. The food must be new, useful, not obvious, and meet the other disclosure requirements for patentability. However, the critical point remains the same: Food can be patented. The patent laws do not discriminate food from any other composition of matter.
The Food Must be “New”
Only new inventions can be patented. This is ofte atent application35 U.S.C § 102. Often, a “new” food is difficult to distinguish from a prior art food. For example, an inventor may struggle to differentiate a truly innovative soup from all prior art soups that came before it. For a truly new soup, drafting a successful patent application depends on the inventor’s approach to drafting claims.
A clever way to distinguish one food from another is to describe it at the molecular level. In the soup example above, understanding how one soup differs in molecular composition would provide a powerful means for defining the differences. Instead of arguing why certain ingredients are subjectively better, the inventor could objectively quantify the improvement. Instead of qualitatively explaining why certain recipes are better, the inventor could point to concrete molecular differences. Defining a food invention in terms of it’s molecular composition provides a significant advantage when arguing for patentability during patent prosecution.
The greatest challenge is explaining why a new food was truly innovative. Here, Chef Peter Wong worked with some unique combinations of ingredients at the 2012 DC Chili Cook-off in Washington, DC.
The Food Must be “Non-Obvious”
For most inventions, obviousness is the critical hurdle to getting a patent. The non-obviousness requirement for patentability is set forth in 35 U.S.C. § 103. In short, the inventor must show that the food would not have been a trivial or routine advance beyond other previously disclosed foods. This area of patent law is very complicated for a variety of reasons. The undisputed standard for evaluating whether an invention is obvious can be found in the Supreme Court’s 1966 Graham v. John Deere decision.
The Inventor Must Adequately Disclose the Food.
In order to receive a patent, the inventor must provide a comprehensive disclosure of the invention. The inventor must also teach the public the best way to make and use it. In the case of a new food, the inventor must teach the public how to make it without “undue experimentation.” The recipe must be something that can be reproduced by someone having ordinary skill in the industry. This disclosure rbargain an inventor accepts when applying for a patent. The inventor must give up the secret recipe in exchange for a limited period of patent protection.
Organometallic Patents Benefit from an Expert in Organometallic Chemistry
Inventors of new inorganic or organometallic technology should work with patent professionals with expertise in inorganic or organometallic chemistry. Inventors’ patents will always be limited by the technical expertise of their patent professionals.
Patent professionals can be viewed as translators, translating the technology into patented property
For an inorganic or organometallic invention, the patent attorney should have expertise in the relevant technology (inorganic or organometallic chemistry) and chemical patent law.
Patent professionals often play the roll of translator for their clients. We convert the technical scientific language into the language of legal patent documents. Through this process, we draft claims, converting a physical thing into intellectual property. A mediocre understanding of either patent law or the technology undermines the value of the resulting patent application. This ultimately compromises the value of the resulting patent.
Unfortunately, inventive entities are often hasty in preparing patent applications. They wait until the last minute. Then, they find a patent professional who has a “good enough” understanding of the relevant technology. Bad idea. The patent process consumes several years and tens of thousands of dollars. See costs. At the end, the process yields an inventors single greatest asset: a government endorsed monopoly on the technology. If the inventor creates something worthy of such a large expenditure, that inventor should not skimp on finding the right patent professional.
Inorganic and Organometallic Patent Expert
I am a card carrying hard core organometallic chemist. When I refer to myself as an expert in organometallic chemistry, I do not mean that I once used Grubb’s catalyst in my organic synthesis. To the contrary, I spent five years, earning my PhD from Peter T. Wolczanski. See photo below.
Peter Wolczanski is a famous inorganic and organometallic chemist. He is pictured here, next to the high vacuum line, which is a staple or inorganic laboratory equipment.
I have synthesized novel, highly air-sensitive transition metal compounds, characterized them, and studied their reactivity.
Many chemists limit their studies to organic molecules or a narrow set of application targeted compounds. In the Wolczanski group, we studied the full spectrum of transition metals.
Finding a patent attorney with a PhD in chemistry does not guarantee expertise in any particular discipline. This is particularly important in some niche areas of chemistry because finding the right patent professional can be more difficult. The inventor should take the time to make sure that the patent professional understands the technology.
For the organometallic chemists out there, do not be afraid to ask your lawyer to opine on the point-group symmetry of your compounds. Or ask them to provide a reasonable molecular orbital splitting diagram. Obviously, there are a number of ways to ensure a good fit between the inventor and the patent professional. Don’t settle.
The cannabis plant is not patentable because it has been in the public domain for centuries.
Changes in cannabis culture are creating incredible opportunities for new cannabis technology. Cannabis and cannabis derived products are overwhelmingly popular in the worldwide market. This popularity is especially noteworthy because the plant and its derivatives are still illegal in the United States. But the war on cannabis appears to be coming to a close. And the popularity of the drug appears to be on the rise, for both medical and recreational uses.
The above changes suggest tremendous opportunities in the cannabis technology industry. Events like the Cannabis Business Summit hope to capture some of these opportunities. As inventors rush into that space, they should remain cognizant of the opportunities for patenting their inventions. For example, inventors could define their inventions as new compositions, devices, or methods.
Setting aside the political issues associated with cannabis, the changing climate is creating incredible business opportunities. According to CNBC, the legal cannabis business is already huge. And the Huffington Post opines that those sales will quadruple by 2018. Most of this business comes from growing and selling the plant itself. But other industries are beginning to blossom. For example, the cannabis food and beverage industry and cannabis device industry have experienced wild growth.
With these new industries come new products and new technology. Inventing something new (i.e., different) gives rise to patentable subject matter. In the case of cannabis, there are a variety of opportunities for inventing new technology.
New Chemical Compositions Derived from Cannabis.
Although the cannabis plant has been known for thousands of years, making new compositions from that plant would give rise to patentable inventions.
Although the cannabis plant has been known for thousands of years, making new compositions from that plant would give rise to patentable inventions.
Naturally occurring substances cannot be patented. As compounds, they are not “new” because they occur in nature without human ingenuity. However, new purified forms of the chemical components of cannabis are potentially patentable. Similarly, new combinations of known molecules can be patented. Regardless of political attention, the patent office will treat cannabis inventions as chemical inventions.
Given the variety of different molecules found in the cannabis plant, the potential for new combinations of those molecules is virtually infinite. Finding new combinations of molecules having desirable properties would give rise to new compositions of matter. These new cannabis compositions can be patented.
New Cannabis Edibles are Patentable.
According to CNBC, the legalization of medical cannabis in several states has paved the way for a budding edible medical cannabis industry. Small businesses in states such as Colorado and California are making cannabis derived treats such as candy, cookies or soda.
New Edibles Derived from Cannabis are Patentable
As we have discussed in some earlier articles, new foods (e.g., candy, cookies, etc.) can be patented as compositions of matter. New flavors of those foods could give rise to additional patents. Given that this class of cannabis containing readymade foods is relatively young, the body of prior art is relatively small. Less prior art makes it more likely that the foods could be defined as new compositions, increasing the likelihood that they could be patented.
Like foods, cannabis beverages (e.g., cannabis beer or cannabis soda) could be patented as compositions of matter.
Along with opportunities for patenting cannabis compositions per se comes the opportunity for patenting methods of making those new compositions. A new food is probably made via a new method. That new method could be claimed and patented.
New devices and methods for administering cannabis or cannabis compositions are patentable
The Pax by Ploom illustrates one example of technology growing up around cannabis development
New devices for using or administering cannabis are patentable. Smoking cannabis has one indisputable downside—the user is smoking the plant. Generally speaking, breathing in burning materials is bad for the user. (Humans should not breath in things that are on fire).
Responding to this downside of smoking, the cannabis device market has grown significantly over the years. Wikipedia describes several varieties of herbal vaporizer technologies. And some websites, e.g., GotVape, specialize in selling commercial embodiments of the vaporizing technology. Many devices, such as Pax by Ploom or the iolite product line have been patented. But the space still remains wide open. Inventors of new devices should follow iolite’s lead by claiming their inventions.
Patenting methods of administering cannabis
U.S. patent law recognizes “methods” as a separate category patentable subject matter. In addition to patenting new “devices” for administering cannabis, the inventor could pursue patent claims directed to the methods of administering cannabis by using those devices.
Changing Culture Suggests Increasing Opportunities for Patenting Cannabis
In recent years, the public opinion surrounding cannabis has changed considerably. And it appears that the nation (and the world) will probably continue to move toward decriminalization and legalization of this plant. One good illustration of this shift can be seen through CNN medical correspondent, Dr. Sanjay Gupta. Dr. Gupta publicly changed his position on cannabis use — discussing some unparalleled medical benefits of the drug along with an overwhelming lack of side-effects.
Assuming that this trend continues, it will spawn new industries filling the void created by illegality. Some examples are new foods, compositions, drug products, services, etc, discussed above. The early stage of these industries makes them particularly exciting from a technology standpoint. The technology is in its early developmental stages, so it is bound to encounter big leaps forward— pioneering inventions. Accordingly, the cannabis technology field offers especially exciting opportunities for inventing and patenting new technology.
Costs for preparing a patent application vary depending on the complexity of the invention. Here is one source of cost data: patent cost statistics. Below, I discuss some highlights from the patent cost statistics and also add some other available figures.
Cost of Patent Applications – Recent Numbers
A Seattle company that I work with made of point of asking the cost question of every inventor and every patent attorney willing to comment. The 2013-2014 numbers fall within the range of $5,000 – $6,000 for a provisional and $12,000 – $15,000 for a non-provisional. Since the United States moved over to the First Inventor to File system, most attorneys agree that the quality (and cost) of a provisional applications is approaching that for a non-provisional application.
Personally, I encourage my clients to invest in a good provisional patent application at the onset. That provides the strongest priority claim and also cuts down on the fees for filing a non-provisional application. (If the provisional application is of non-provisional quality, then it takes little work to use it as a non-provisional one year later).
One major Seattle technology firm reported paying a flat per-application fee based on 3 levels of patent complexity: A = $7500, B = $10,000, C = $12,500. Nearly all sophisticated software patents are of B or C complexity. Chemical inventions are mostly C complexity.
Some Ballpark Cost Figures for Filing a Patent
$10,000, on the low end, to file a patent. “But [Ronald J. Riley, president of the Professional Inventors Alliance USA] and other small inventors also knock the present system: High legal bills — inventors can expect to spend $10,000, on the low end, to file a patent; most of that is attorney’s fees.” How much does it cost to file a patent? What is the cost of a patent? (Akweli Parker, “Inventor’s reality,” Philadelphia Inquirer, Philadelphia, Pennsylvania, March 23, 2006) $10,000 – $15,000 as a range. Attorney fees charged for preparing a patent application. “[M]ost companies spend between $10,000 and $15,000 in attorney fees to prepare the application.” Patent attorney fees. (Dean Turman, patent attorney at MacCord Mason, Greensboro, North Carolina quoted in Michelle Cater Rash, “Restructuring raises patent fees, could hinder startups,”Business Journal Serving the GreaterTriad Area, April 11, 2005)
Complex Inventions Cost More
Complex inventions cost more to prepare than simple applications. More work and more expertise are required to file patent applications on complication technology. For example, one should expect patents covering chemical compounds or processes to involve more work and expertise than inventions to simple machines.
Many large firms break inventions down into tiers of complexity. Extremely simple inventions would fall into the least costly tier, hovering around $6,000. (Extremely simple inventions could include coat hangers, paper clips, earmuffs, etc). Highly complex inventions would fall into the most costly tier, ranging from $15,000 and upwards. Highly complex inventions would include pharmaceutical, medical imagine devices, complicated software, and the like.
One back-of-the-envelope way to determine the cost is to ask the level of education required to work with the technology. Would a machinist or technician understand the invention? Or would understanding the invention require a PhD?
According to Julia Feldmeier of the Washington Post, filing a patent application “can easily run more than $20,000, depending on the complexity of the patent…” See “Any Bright Ideas?; How Local Inventors Try to Capitalize on That ‘Aha!’ Moment,” The Washington Post, March 4, 2007).