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Regardless of the type of patent – utility, plant, or design – to qualify for patent protection, the subject matter must be novel, non-obvious, and not cover naturally occurring substances or an invention based upon algorithms. Patents are territorial and applications must be filed within certain statutory deadlines.
Unlike federal trademark registrations, patents need not be supported by "lawful use" and patents directed to cannabis related products and processes are regularly issued and found valid and enforceable. For example, GW Pharmaceuticals owns U.S. Patent No. 9,066,920 for a cannabis extract for epilepsy treatment. United Cannabis Corp. owns U.S. Patent No. 9,730,911 for a cannabis based extract. Axim was recently issued U.S. Patent No. 10,172,786 for a cannabidiol toothpaste claiming in part: [a] cannabinoid toothpaste composition comprising: an abrasive agent, a binder, a humectant, a fluoridating agent, a surfactant, water, a thickener, lactoferrin and cannabidiol present in an amount of 0.1% to 0.5% by weight.
In addition to patents covering cannabis formulations, patents can cover devices. For example, Juul Labs Inc. owns patents covering Pax® vaporizer devices, e.g., utility U.S. Patent No. 9,408,416 and design U.S. Patent No. D762003.
When performing due diligence of a target company’s patents and technology, one should look at a variety of issues, including the following:
•What technology is the company using? In addition to the technology mentioned above, consider cannabinoid receptor targeting, cannabis pharmaceutical compositions and derivatives, cannabis strains, methods of producing products including extracting, purifying and concentrating extracts, dosage forms, detection methods, etc.
•Has the target company technology been timely protected under the patent laws, e.g., were patent applications timely filed?
•Are company patents valid and enforceable – particularly an issue with broad cannabis patents as the Patent Office does not have an extensive library of prior art to use when it examines the patent application?
•What is the scope of the patent claims?
•When will the patents expire?
•Where are they enforceable?