By Tony Dutra
June 7 — Full Spectrum Laboratories Ltd. received a patent June 7 on making synthetic cannabinoids—the active ingredients in marijuana—highlighting a marked difference between the two sides of the Patent and Trademark Office.
One can't trademark marijuana-related brands at the PTO. However, the office started issuing patents on cannabinoids at least as early as 2003.
Full Spectrum, an Irish subsidiary of Tampa, Fla.-based Teewinot Life Sciences Corp., will have intellectual property protection to the extent that it will be able to stop others from copying its process for making cannabinoids.
But no matter what brand names it gives the resulting products, its only hope of preventing someone from copying those names lies with a patchwork of state trademark laws.
The federal trademark bar comes directly from the public purpose of trademark protection, which is to give buyers recognizable signs of products and services that are in the stream of commerce.
National commerce in marijuana is barred because the drug is still listed on Schedule I of the U.S. list of controlled substances. The PTO won't give a national trademark to reward commerce that is illegal. See Trademark Manual of Examining Procedure §907.
But there is no corresponding bar, at least not formally, in patent law. Section 101 of the Patent Act includes a “utility” requirement, but nothing in the statute nor in the PTO's instructions to examiners tells them to look out for illegal utility. In 1999, the U.S. Court of Appeals for the Federal Circuit held that “the principle that inventions are invalid if they are principally designed to serve immoral or illegal purposes has not been applied broadly in recent years.” Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 51 U.S.P.Q.2d 1700 (Fed. Cir. 1999).
Further, even though the Drug Enforcement Administration defines Schedule I drugs as having “no currently accepted medical use,” that didn't stop that 2003 patent, U.S. Patent No. 6,630,507, granted to the U.S. Department of Health and Human Services. The patent claims cannabinoids for use as antioxidants and neuroprotectants. Subsequent patents have been granted for treatment of diseases associated with immune dysfunction and use as a vasoconstrictor. Others have claimed modified formulations and disclosed biosynthesis methods.
Full Spectrum's U.S. Patent No. 9,359,625 claims cheaper and more efficient methods of biosynthesis, resulting in purer compounds.
Teewinot's press release said it owned federally licensed laboratories in Canada—the inventors are from Vancouver—and would collaborate with Albany Molecular Research Inc. in “scaling up its proprietary processes.”
Without the ability to protect a brand name under federal trademark law, a company must now resort to state laws.
Currently, 24 states and the District of Columbia have laws legalizing medical marijuana in some form, and Teewinot likely would want to brand its product to have a national footprint.
To prevent copying of its trademarks for medicinal use, the company will have to settle for state-by-state registration unless the Controlled Substances Act is changed.
If the federal government moves marijuana to Schedule II, Teewinot's options could change. The PTO has granted registration of Demerol, Dilaudid, OxyContin, Vicodin, and a number of other brand names for Schedule II drugs.
To contact the reporter on this story: Tony Dutra in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Mike Wilczek in Washington at email@example.com
Patent at http://src.bna.com/fF5.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)