Cannabis Considerations: Protecting your Cannabis Innovation

by Knobbe Martens

Knobbe Martens

Introduction – Is Patenting Cannabis Legal?

Early protection of intellectual property is a critical component in any business’s efforts to secure a competitive advantage in the marketplace.  In the cannabis space, efforts to secure IP rights may be influenced by conflicting federal and state regulations.  Despite increasing state regulation and legalization, cannabis remains a Schedule I drug under the Controlled Substances Act, and possession of cannabis is prohibited by federal law.  However, this is not an express impediment to patenting cannabis-related inventions.  Indeed, the U.S. Patent and Trademark Office (“USPTO”) has been issuing cannabis-related patents since as early 1942, including U.S. Patent No. 6,630,507, which is owned by the federal government, and relates to the use of cannabinoids as antioxidants and neuroprotective agents.

Basic Considerations

When considering filing a patent application for a cannabis-related invention, it is important to note that the USPTO applies the same legal standards to cannabis-related applications that are applied to all other categories of patent applications.  That is, the invention must be new, useful, nonobvious and the application must teach a person skilled in the art how to make the invention and how to use the invention.  Cannabis patents and applications are not solely directed to compositions that include tetrahydrocannabinol (“THC”) and/or cannabidiol (“CBD”), two compounds of interest found in cannabis.  Rather, cannabis-related innovation includes a broad range of technologies, including, for example:

1. Plants – new strains of cannabis and genetically modified cannabis;

2. Detection and analysis –physical and chemical techniques for identifying and characterizing that various cannabinoid and terpenoid constituents present in cannabis;

3. Extraction and processing – methods of removing the desired compounds from cannabis and/or processing plants or extracts to achieve a desired chemical profile;

4. Compositions – essential oils, topical or cosmetic creams, and smoking or ingestible products;

5. Consumption devices – inhalers, nebulizers, applicators, or vaporizers;

6. Methods of treatment – methods of treating anorexia, epilepsy, and chronic pain; and

7. Other cannabis-related products – methods of cultivation and specialized agricultural implements. 

Thus, whether you are a grower, engineer, chemist, physician, or related in some other way to the cannabis industry, it is important to consider your options for protecting your innovation. 

Utility, Plant, and Design Patents

As noted above, the USPTO applies the same standard to reviewing cannabis-related patent applications as other patent application.  Likewise, companies in the cannabis industry may apply for the same types of patent protection as companies in other industries.  Specifically, plant patents, design patents, and utility patents. 

The vast majority of U.S. patents are utility patents, which protect a new (or improved) product, process, or machine.  Utility patents can be used to protect any of the classes of cannabis products described above.  For example, U.S. Patent No. 8,910,630, directed to a cannabis drug delivery and monitoring system; and U.S. Patent No. 4,189,491, directed to methods of treating glaucoma with THC.  However, an important consideration, particularly for method of treatment applications of cannabis, is the increasing importance of data.  U.S. patent examiners reviewing such claims are increasingly requiring at least some data to show proof of concept.  However, obtaining such data in the U.S. can be substantially more challenging than in jurisdictions where cannabis is legal. 

Utility patents can also protect cannabis strains, for example, by claiming a cannabis plant having a range of chemical parameters, such as particular levels of THC, CBD, and/or particular terpenoids.  See, e.g., U.S. Patent No. 9,370,164.  This provides broader coverage than a plant patent (discussed below), and also allows for more variation in chemical profile of the plants during the various stages of growth and harvesting. 

To date, there are relatively few plant patents covering cannabis strains. Plant patents may be used to protect specific plants that are not found in the wild and that are asexually reproduced.  The ratios of various desired cannabinoids and terpenoids can be used to differentiate strains of cannabis, as well.  However, plant patents are limited to a single claim directed to the particular strain of interest.  This may not stop a competitor from developing and using a close, but non-infringing, cannabis strain. 

Design patents protect the ornamental appearance of an item, but not its function or utility.  The particular external appearance of an analytical instrument, the shape of a vaporizer, and the appearance of a pipe may all be protected by a design patent.  Moreover, while design patents may only contain a single claim and do not protect an item’s function, they are typically obtained faster and at lower cost than a utility patent. 

Trade Secrets

If your innovation is something that would not easily be reverse-engineered by another party (for example, a particular extraction/purification process), you may consider protecting it as a trade secret.  Each of the types of patents described above provide the patent owner a limited time (20 years from filing date for utility and plant patents, and 15 years from grant for design patents) in exchange for disclosing the invention to the public.  

In contrast, trade secrets derive value from being secret, and accordingly, in order to qualify as a trade secret you must make reasonable efforts to keep the invention secret.  This could include, for example, limiting the number of individuals with access to the secret information, limiting access to the physical location where the invention is practiced, and requiring employees to sign confidentiality and non-disclosure agreements.  However, unlike a patent, if another company independently arrives at the same invention, you cannot use your trade secret to stop them from practicing the invention.  Thus, absent your disclosure of the trade secret or independent invention, the information will not become public, and the trade secret can be protected for an unlimited period of time.   


In sum, there are many options for protecting your innovation in the cannabis industry.  Carefully evaluating the possible avenues for IP protection are particularly important in this relatively new, highly competitive, and fast-paced field. 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Knobbe Martens | Attorney Advertising

Written by:

Knobbe Martens

Knobbe Martens on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.