High Stakes: Protecting Your Cannabis Intellectual Property

By Poonam Tauh and Carl Farah, October 13, 2020

It has been almost two years since the federal legalization of cannabis, and Canada’s legal cannabis market is quickly blossoming into a massive industry. The market is constantly growing with many US states (e.g., Illinois) and Europe embracing regulatory change. Market research predicts that the global legal cannabis market could reach CAD $100 billion by 2027[1].

While medical cannabis has traditionally been a source of intellectual property (IP), legalization is sure to bring an influx of applications in the coming years. Therefore, understanding and deploying your IP toolbox to its fullest potential is the best means of ensuring strong protection of your IP assets. This article will briefly discuss some of the tools that cannabis businesses should consider when creating a robust IP moat around their products and services.

Patents in the cannabis industry can include novel or modified active ingredients, methods for the isolation of novel cannabinoids, novel formulations of active ingredients, genetically modified cells, and the use of compositions comprising cannabinoids for treatment.

In addition to patents, Plant Breeders Rights (PBRs) are an excellent complement and can be used to protect new cannabis plant varieties. PBRs are a form of intellectual property that specifically protects new plant varieties and offers exclusivity in terms of the sale, production, reproduction, import and export of the variety. This protection can be further extended beyond Canada by filing an international application.

While higher life forms are not patentable subject matter in Canada[2], genetically modified cells and methods of producing such cells are patentable[3]. New plant varieties that have been produced by traditional breeding methods are not patentable and as a result, are only eligible for protection under PBR. As such, businesses should take advantage of both regimes by obtaining a patent to protect genetically modified cells and PBRs to extend protection to the resulting plant variety.

In order to be granted protection under PBRs, the variety must meet the following criteria:

• New: the variety may not have been sold longer than 1 year in Canada and 4 years outside Canada;
• Distinct: the variety must be distinguishable from varieties whose existence was common knowledge on the date of filing;
• Stable: the variety must express a stable set of characteristics throughout propagation; and
• Uniform: the variety must exhibit characteristics that are consistent between plants within the variety.

Industrial designs are another useful tool in your IP arsenal and can be used to protect the three-dimensional features of a shape and configuration, as well as the two-dimensional features (patterns and ornaments) of finished products intended to be sold (e.g., cannabis cigarettes). Once granted, an industrial design offers protection for up to 15 years. Businesses should also be aware that Health Canada has strict regulations surrounding the packaging design for cannabis products.

Trademark registration is another available tool cannabis businesses should employ to protect their brand. It is important to be mindful that, for example, cannabis products or any related service cannot be promoted by depiction of a person, character, or animal, whether real or fictional. For additional information, check out our recent article about how to properly protect your cannabis-related trademarks. Canadian businesses should also be aware that American companies might choose to register their trademarks in Canada due to some difficulty in obtaining a cannabis-related trademark in the US.

Utilizing and deploying the proper tools in your IP toolbox is the best way to maximize the value of your cannabis business. Consult a professional at MBM to discuss how to best protect your IP portfolio.