Matthew Brekus and JC Zwisler
Hashish has grow to be a rising sector for funding with elevated focus by buyers and entrepreneurs. See our colleague’s impressions from the 2022 MJ BizCon hashish convention here. With the elevated funding pouring into this sector has come a need to guard the mental property within the merchandise, analysis, and developments delivered to market. Beforehand, patents—a restricted monopoly permitting a patent holder to bar opponents from making/utilizing/promoting/importing a claimed system or methodology—had been of restricted use for these within the hashish trade.
Hashish stays federally unlawful and thus, makes an attempt to implement patents towards opponents in federal court docket had been doomed to fail underneath the illegality doctrine. The illegality doctrine, because it sounds, is the premise {that a} plaintiff can’t use a court docket of regulation to safeguard criminality. For instance, a contract used to rent thieves to rob a financial institution couldn’t be enforced by a court docket of regulation for the aim of robbing the financial institution.
Nevertheless, cracks within the dam have begun to seem, comparable to within the Central District of California. The court docket there, in Gene Pool Techs., Inc. v. Coastal Harvest, LLC, denied a Movement to Dismiss asserting the illegality doctrine towards hashish associated patents for extracting compounds from plant supplies. No. 2:21-cv-08756-JWH-SHK, ECF No. 92 (C.D. Cal. Nov. 23, 2022).[1] Equally, a Colorado court docket discovered the illegality doctrine didn’t bar a design patent infringement swimsuit involving a TOKER POKER hand device[2]. Lifted Ltd., LLC v. Novelty, Inc., No. 16-cv-03135-PAB-GPG, 2021 WL 4480566, *3 (D. Co. Sept. 30, 2021). The Court docket discovered the patented design was for a product historically used with tobacco although it may very well be used with hashish. Id. Nevertheless, the court docket famous that merchandise that are per se drug paraphernalia comparable to bongs, chillums, and roach clips wouldn’t have withstood its scrutiny. Id., at *2 (citing 21 U.S.C. § 863 (d)(1)-(15) itemizing per se drug paraphernalia).
The reasoning in Gene Pool Techs. is at present obtainable by request from the court docket reporter. ECF No. 101. The authors will likely be following up on this matter with an article analyzing the reasoning as soon as we have now extra totally reviewed the transcript. Preliminary takeaways from these instances nonetheless, point out the significance of avoiding the “c-word” in a utility patent specification and claims, or the title in a design patent.
The courts in Gene Pool Techs. and Lifted Ltd., LLC indicated that not explicitly claiming a hashish product allowed the infringement declare to proceed unhindered by the illegality doctrine. Nevertheless, the authors observe that the present case regulation could change if/when hashish is now not a Schedule I managed substance. Within the meantime, patent candidates ought to ask themselves “what cannI say” when making ready a cannabis-related patent software.
[1] The asserted patents had been: U.S. Patent No. 9 , 144 ,751 (the “‘751 Patent “), entitled “Techniques for Extracting Solute from a Supply Materials”; U.S. Patent No. 9 , 145 ,532 (the “‘532 Patent “), entitled “Strategies for Extracting Solute from a Supply Materials”; and U.S. Patent No. 9 , 587 ,203 (the “‘203 Patent “), entitled “Strategies for Extracting Solute from a Supply Materials.”
[2] The USA Patent and Trademark Workplace (“USPTO”) doesn’t permit registration of a trademark software for items which might be per se drug paraphernalia. However the USPTO allowed registration of the TOKER POKER mark for “multi-function hand instruments comprised of cigarette lighter holders and pipe tampers” in Class 34. That is presumably as a result of the TOKER POKER device may very well be used for tobacco.
