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.”
Does U.S. Patent No. 6,630,507 Give the Government Ownership of Marijuana?
No. U.S. Patent No. 6,630,507 does not give the government ownership of the marijuana plant. The claims in the patent define methods of using certain non-psychoactive cannabinoid compounds for treating a list of diseases caused by oxidative stress.
U.S. Patent No. 6,630,507 is limited to methods of using a certain class of isolated cannabinoid compounds—it does NOT claim the plant (or any compounds in the plant) per se.
Marijuana Technology and Marijuana Patents
I recently worked on a project having to do with a new marijuana technology. During the project, I became interested in whether entrepreneurs had begun mining the marijuana patent landscape. I asked Google. When I searched for “marijuana patents,” the most popular result had to do with the U.S. Government (the “government”) owning marijuana by virtue of a U.S. Patent No. 6,630,507. This notion appears to have many activist groups upset. Those groups believe that the government is limiting their use of marijuana through patent enforcement. Is this possible? No. The government does not “own marijuana” for several reasons.
The marijuana plant is not patentable because it has been in the public domain for centuries.
Products of Nature are Not Patentable
First, marijuana is a natural product. It has been around forever. But under US patent law, only new things can be patented. Since marijuana is not new, it cannot be patented. Naturally occurring substances like marijuana are in the public domain. I recently looked into a similar uprising about fennel, which is also in the public domain. Things in the public domain belong to the public without any patent-related royalties or exclusivity. From the standpoint of patent law, we all own marijuana communally.
U.S. Patent No. 6,630,507 Only Claims Methods of Use
Second, every claim in U.S. Patent No. 6,630,507 defines a method of use. Not a compound. Not a composition of matter. The government does not own the patent rights to marijuana per se. It owns the rights to methods of using certain cannabinoids for treating oxidative stress. The government could prevent another entity for methodically using certain cannabinoids for the purpose of treating a disease caused by oxidative stress.
Although marijuana (the plant) is not patentable, various marijuana technologies can be patented. In the case of U.S. Patent No. 6,630,507, the inventor patented a method of using certain (isolated) cannabinoids for a specific medical treatment.
The claimed methods are limited to treating certain diseases
According to U.S. Patent No. 6,630,507, the cannabinoids used in the claimed method are found to have particular application as neuroprotectants, for example in limiting neurological damage following ischemic insults, such as stroke and trauma, or in the treatment of neurodegenerative diseases, such as Alzheimer’s disease, Parkinson’s disease and HIV dementia.
Notably, about 1 hour ago, the Huffington Post ran a story about an “Ohio Mother Moving to Colorado to Treat Daughter’s Epilepsy With Cannabidiol Oil.” That particular use could arguably fall within the claims of the patent. The isolated oil seems to be within the scope of the nonpsychoactive compounds identified in the patent. Plus, treating epilepsy seems to be within the scope of the methods of treating ” neurological damage following ischemic insults, such as stroke and trauma, or in the treatment of neurodegenerative diseases.”
On the one hand, folks will probably get bent out of shape if the government changes the mother a royalty on using the isolated oil to treat her daugter’s epilepsy. On the other hand, the inventors of that patent made that treatment an option and arguably deserve a royalty for their contribution.
The U.S. Patent System does not offer a route to “own” marijuana because that plant is in the public domain
The Claimed Methods are Limited to Administering NonPsychoactive Cannabinoids.
The claimed methods use a class of cannabinoid compounds that avoid the “high” traditionally experienced by marijuana users. In particular, “Nonpsychoactive cannabinoids, such as cannabidiol, are particularly advantageous to use because they avoid toxicity that is encountered with psychoactive cannabinoids at high doses useful in the method of the present invention.”
The patent further distinguishes the cannabiniods used in its methods from other cannabinoids that produce “undesired psychotropic side effects.” The invention appears limited to methods of treating oxidative stress with a subset of such drugs are “substantially free of psychoactive or psychotoxic effects.” As a back of the envelope test, a marijuana user should could determine that she is not infringing on the 6,630,507 patent any time she experiences “psychoactive” properties.
Going back to the example of the Ohio mom from the Huffington Post article: from the standpoint of patent law the government would seem to have a better case for preventing the girl from using isolated nonpsychoactive cannabidiol than using naturally occurring marijuana for the same purpose. Part of the government’s invention seems to be separating the therapeutic (neuroprotective) properties from the unwanted psychoactive properties found in the natural product.
U.S. Patent No. 6,630,507 has 26 method claims.
Claim 1 is probably the broadest claim. It recites: A method of treating diseases caused by oxidative stress, comprising administering a therapeutically effective amount of a cannabinoid that has substantially no binding to the NMDA receptor to a subject who has a disease caused by oxidative stress.
This is a method of use claim. The government does not own marijuana. Rather, the government owns the rights to a method of using a particular group of cannabinoid molecules to treat “oxidative stress.” Oxidative stress is defined in the specification. The group of cannabinoid molecules is limited to those having “substantially no binding to the NMDA receptor.”
Stop Blaming Patent Law for Marijuana Restrictions
The fact that the government does not “own” marijuana by virtue of s U.S. Patent No. 6,630,507 does not preclude the government from prohibiting people from using marijuana. The last time I checked, using marijuana is a federal crime under a variety of drug laws. Nevertheless, those federal statutes have nothing to do with the patent laws. Please, do not blame patent law for this one.
The i-Grow Device sold by i-Green has been heralded by marijuana growers as an huge advance in marijuana technology
Zenion Industries Air Ionizing Apparatus
We recently posted about how the changing marijuana culture is creating new opportunities for patenting marijuana technology. One example of this phenomenon can be seen through Zenion Industries. Zenion Industries has invented and filed international patent applications on its devices for improving crop health and yield. The device has received a rapid and enthusiastic reception amidst marijuana growers—an industry where the resulting crop demands a relatively high price per gram. According to Zenion Industries, marijuana growers in Norther California have alerted them to a tremendous market opportunity for using the device to increase cannabis yields: “this may have not been your intended market but you really need to make this available to all legal cannabis growers.”
We found the development of the i-Grow particularly interesting because Zenion Industries intelligently decided to claim the invention in PCT Application (No. PCT/US2012/043325) by Jimmy L. Lee. According to Zenion, the company has filed for patent protection in 161 countries. Good thinking.
Zenion’s Licensee, i-Green LLC, Sells the i-Grow Device
Zenion is already benefiting from licensing it’s technology. Zenion licenses it’s air ionizing apparatus to i-Green LLC. Last May, 2013, iGreen exhibited the i-Grow device at the National Hardware Show in Las Vegas, NV. The show was attended by almost 100,000 suppliers and dealers from the US and abroad. According to Rohnert Park, i-Green LLC’s booth was “buzzing with interest from crowds of vendors.” People at the show were attracted to the idea that a solar-powered product could benefit ground plants. The i-Grow helps plants grow healthier and produce more. According to Zenion’s data, the increases in crop yield are dramatic:
The i-Grow system, leveraging Zenions technology and sold by i-Green LLC boosts crop yield.
Zenion Industries Invention
In Zenion’s patent application, they describe their technology as follows:
“An air ionizing apparatus for enhancing plant growth that includes a housing, solar cells mounted atop the housing, a voltage regulator/conditioner circuit coupled to the solar cells, an oscillator/modulator circuit coupled to the voltage regulator/conditioner circuit, a high voltage converter/multiplier circuit coupled to the oscillator/modulator circuit, and an ion emitter element coupled to the high/voltage converter/multiplier circuit and disposed at the bottom of the housing. Solar energy transferred to the solar cells and converted into current is converted to high voltage through the voltage/regulator, oscillator/modulator, and high voltage converter/multiplier circuits. The high voltage is then applied to the ion emitter element to produce ions from ambient air in close proximity to a plant being treated.” See PCT Application.
Zenion Industries Claims
Based on the above description of the invention, Zenion has claimed 19 inventions, all directed to the air ionizing technology. Claim 1 illustrates the broadest device (aka “machine” or “apparatus”) claim. Zenion has also claimed some new methods of using the device. Claim 12 illustrates the broadest method claim.
Zenion’s Claim 1
Zenion’s claim 1 recites as follows (bullet points added for reading ease):
1. An air ionizing apparatus for enhancing plant growth, comprising:
an electrical power source;
a voltage regulator/conditioner circuit electrically coupled to said electrical power source and disposed in said housing;
an oscillator/modulator circuit disposed in said housing and electrically coupled to said voltage regulator/conditioner circuit;
a high voltage converter/multiplier circuit disposed in said housing and electrically coupled to said oscillator/modulator circuit; and
an ion emitter element electrically coupled to said high/voltage converter/multiplier circuit, said ion emitter element having a tip exposed through a bottom of said housing; wherein solar energy upon the solar cells is converted to high voltage through said voltage/regulator, said oscillator/modulator, and said high voltage converter/multiplier circuits, the high voltage then being applied to said ion emitter element to produce ions from ambient air.
Zenion’s Claim 12
12. A method of enhancing and accelerating plant metabolism and growth, comprising the step of positioning and operating an air ionizing apparatus in close proximity to a plant so as to expose the plant to ions produced in the air proximate the plant.
Changes in law and policy are opening the door to tremendous growth in marijuana technology
Changes in marijuana culture are creating incredible opportunities for new marijuana technology. Marijuana and marijuana derived products are overwhelmingly popular in the worldwide market. This popularity is especially noteworthy because the drug is still illegal in the United States. But the war on marijuana appears to be coming to a close. (See video below). 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 marijuana technology industry. 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.
Patent Opportunities Arising from Changing Marijuana Culture
Setting aside the political issues associated with marijuana, the changing climate is creating incredible business opportunities. According to CNBC, the legal marijuana 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 marijuana food and beverage industry and marijuana 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 marijuana, there are a variety of opportunities for inventing new technology.
New chemical compositions derived from marijuana.
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 marijuana are potentially patentable. Similarly, new combinations of known molecules can be patented. Regardless of political attention, the patent office will treat marijuana 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 marijuana compositions can be patented.
Marijuana Edible Product Market
New Marijuana Edibles are Patentable
According to CNBC, the legalization of medical marijuana in several states has paved the way for a budding edible medical marijuana industry. Small businesses in states such as Colorado and California are making marijuana derived treats such as candy, cookies or soda.
As we have discussed in some earlier articles, new foods (e.g., candy, cookies, cannabis beer, or soda) can be patented as compositions of matter. New flavors of those foods could give rise to additional patents. Given that this class of marijuana 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.
Along with opportunities for patenting marijuana compositions per se comes the opportunity for patenting methods of making those new marijuana 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 marijuana or marijuana compositions
New devices for using or administering marijuana are patentable
Smoking marijuana 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 marijuana 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 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 marijuana
U.S. patent law recognizes “methods” as a separate category patentable subject matter. In addition to patenting new “devices” for administering marijuana, the inventor could pursue patent claims directed to the methods of administering marijuana by using those devices.
Changing Culture Suggests Increasing Opportunities for Patenting Marijuana
In recent years, the public opinion surrounding marijuana 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. This past August, he publicly changed his position on marijuana use — discussing some unparalleled medical benefits of the drug along with an overwhelming lack of side-effects. Here is the video:
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 marijuana technology field offers especially exciting opportunities for inventing and patenting new technology.
Compositions of matter are one of the four principle categories of patentable subject matter
Patenting a Composition of Matter
Composition of matter claims are considered to be among the most powerful patent claims possible because they are broadly applicable. They cover any use of the claimed composition of matter. (By contrast method claims would only cover one method but not necessarily other uses).
What is a composition of matter?
Under United States patent law, a composition of matter is one of the four principal categories of inventions that may be patented. The law provides that “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of [title 35 of the United States Code]” See 35 U.S.C. 101.
Hopefully, the terms “process,” “machine,” and “manufacture” are pretty straightforward based on their conventional meanings. A composition of matter refers to the stuff that an invention is made out of. In particular, defining a composition of matter requires identifying its molecular composition.
The United States Supreme Court has defined “composition of matter” to mean “all compositions of two or more substances . . . .” This definition is somewhat problematic because it fails to account for inventions made of only one substance. In practice, those one-substance inventions (aka “new chemical entities” or “new molecules”) are called compounds, which is confusing because “compound” is not listed in the categories of patentable subject matter. The easiest way to make sense of this discrepancy is to consider a “compound” to be a special class of “composition of matter,” having only one molecular formula.
A composition of matter is a mixture of two or more compounds, i.e., a mixture of two or more chemically distinct molecules
Claiming a composition of matter
An inventor should draft claims to a composition of matter any time the invention differs from the prior art on account of its chemical profile. If the invention can be distinguished base on using new ingredients or different combinations of known ingredients, then it is likely that the invention could be defined as a composition of matter. Here, it is essential to understand the underlying chemical features of the invention.
Some examples of new compositions of matter would include the following:
New materials, such as plastics, metal alloys, etc.
Notably, the above list of “new” inventions does not require that the ingredients are new. So long as the resulting combination provides something different than anything made before, that end product could be described as a new composition of matter. In the case of food and beverages, the resulting flavor is a relatively good indicator that the end product is new. Flavors and fragrances come from molecules. A different flavor or fragrance would indicate that the underlying molecular composition is different.