New Article on Enforcement of Marijuana Patents
I recommend readers check out Professor Bill McNichol’s (Rutgers) new article on the enforcement of marijuana patents:
William J. McNichol, Jr., The New Highwayman: Enforcement of U.S. Patents on Cannabis Products, 101 J. of Patent and Trademark Office Society 24 (2019). (The link is to the SSRN version of the piece.)
Here is the abstract:
“Under a long line of authorities going back to The Highwayman’s Case in 1725, theillegality of the use, possession, and distribution of these products probably creates an insurmountable barrier to the enforcement of most patents that claim Cannabis products or their use. This means that, with respect to the Cannabis industry, the U.S. patent system is unlikely to play its customary roles of incentivizing innovation and encouraging investment.”
McNichol does a wonderful job of canvassing legal history and doctrine to explain why he thinks courts will balk at enforcing cannabis patents. He also nicely explains why the PTO can issue cannabis patents, even if patentees might struggle to enforce them. Indeed, he notes that the PTO has already issued more than 3,000 patents for cannabis products, including cannabis strains and methods for administering cannabis (among other things). I highly recommend a full read of the piece, which is of manageable size (30 pages).
The piece is also very timely. As Professor McNichol notes, a recently filed patent infringement action, United Cannabis Corp. v. Pure Hemp Collective, Inc., No. 18-cv-01922 NYW (D. Colo., July 30, 2018) – apparently the first infringement action involving a cannabis patent — will likely put his analyses and court doctrines to the test.
I will likely write more about this topic as I complete my article on cannabis trademarks, given the striking parallels between patent and trademark law governing unlawful products. But in the meantime, enjoy this piece from Professor McNichol.