"There Will Be Winners And Losers" In the Marijuana Patent Race
It’s not every day you get a true Eureka! moment in science. But Andrew Alfred, chief scientist at the Denver-based cannabis company, LivWell, recently did. The company grows marijuana in a giant indoor “farm” for sale at their dispensaries in Colorado and Oregon.
Alfred said one day “we had someone come into our office and say ‘Hey I got something that I haven’t seen before. You want to come take a look at this?’
He said what they found was Eureka-worthy indeed. Alfred had been growing a cannabis plant through an asexual breeding process called “tissue culture.” It’s sort of like cloning. But their cloned plant was now behaving differently from its mother plant. It was healthier and hardier and altogether new.
So they decided to hire a patent lawyer. They worked on their patent application for more than a year, taking meticulous measurements and notes and describing their new plant in detail before finally submitting it to the discretion of the US Patent and Trademark Office.
“It was graded and evaluated purely on the merits of how well I described a plant,” said Alfred, “just as if it were a rose.”
And yes, he does see the paradox here: a federal agency issuing patents for something that is still illegal under federal law. But he said the reviewers didn’t care about that. He got his patent.
It’s no secret the cannabis industry is becoming mainstream, and some companies, like LivWell, are racing to patent their products -- from new strains of marijuana plants to new methods of extracting of THC. But because this industry has lived in the shadows for so long, that race may not be a clear or fair one.
Historically it’s been relatively rare for a strain of cannabis to gain a plant patent. Alfred knew of only one other in existence before LivWell’s. That may be because the plant patent is a newer category for the US Patent and Trademark Office. It was established in 1930 for inventors who, according to the USPTO, “invented or discovered and asexually reproduced a distinct and new variety of plant.” But other kinds of patents in the cannabis industry have been around for a while.
The USPTO started handing out patents for marijuana-related products decades ago. This was even before the period when a growing number of states started passing medical marijuana laws. But the number of awarded cannabis patents has picked up remarkably since Colorado and Washington legalized the plant for recreational use.
“So I think the race is on,” said Jeremy Kapteyn, a patent attorney focusing on marijuana law. He’s happy about the shift. He says it’s one way if normalizing this emerging industry.
But “there's going to be winners and losers,” he said. “It's not a merit-based system. It's whoever's first and has the most money.”
In other words, capitalism in action.
Beth Schechter is disappointed. She helped created an archive of marijuana plants for the non profit, Open Cannabis Project.
“I think we did have the sense that the cannabis industry is not gonna be like other industries,” Schechter said. “And we’re all having a really big wake-up call that that’s not the case. The cannabis industry is becoming very corporate very quickly.”
By documenting existing cannabis plants she tried to prevent patents that would step on the toes of what others had already been doing.
Schecter said some types of patents are more threatening than others. She’s not quite as worried about narrow ‘plant patents’ like the one Andrew Alfred got for LivWell. Those are limited to the unique strain of plant and any of its direct offspring.
She’s more concerned about utility patents – a patent type that’s wider in scope. It can cover a process, a piece of equipment, or even a plant’s DNA.
Still Schechter does see a way for companies to patent ethically. And that’s to make them appropriately narrow.
“Don’t try and get a patent that’s so broad that now nobody else can breed something with THCv in it,” she said. “Don’t do that.”
Jim Parco has a different beef with cannabis patents. He owns a mid-sized cannabis extraction company in Pueblo, Colorado called Purplebees. He said someone could easily run to the patent office with a process or product that he’s been using for years.
“Does that preclude us from using it? I don't know,” Parco said. “But it's the five magic words: tell it to the judge.”
He also has no idea if anything he’s currently doing is patentable.
“Am I unique?” he asked. “I was. I was one of the first ones to do all of this. Am I still unique? Probably not.”
So in a sense, he may have already lost out. On the other hand, he said patenting just isn’t his M.O. He said the industry started out with an open source collaborative ethic and he’d rather keep it that way.
Plus, he said, in the world of marijuana, you get used to high risk.
“If the DEA wanted to drive into my yard, take a battering ram and bust down our doors, arrest all of our employees, and confiscate all of this equipment, there’s not a damn thing I can do,” said Parco.
So does he lose sleep worrying about patents? No. He just can’t be bothered.
This story was produced by the Mountain West News Bureau, a collaboration between Wyoming Public Media, Boise State Public Radio in Idaho, KUNR in Nevada, KUER in Salt Lake City, and KRCC and KUNC in Colorado.
Note: Jim Parco is also a professor at Colorado College, KRCC's licensee.
Copyright 2021 KRCC. To see more, visit KRCC.