Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
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.
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Patent at http://src.bna.com/fF5.
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