Patenting Marijuana Strains: Baking Up Patent Protection for Growers in the Legal Fog of This Budding Industry

• Publication year: 2015

Patenting Marijuana Strains: Baking Up Patent Protection for Growers in the Legal Fog of this Budding Industry

Joseph Dylan Summer

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PATENTING MARIJUANA STRAINS: BAKING UP PATENT PROTECTION FOR GROWERS IN THE LEGAL FOG OF THIS BUDDING INDUSTRY

Joseph Dylan Summer^*

Table of Contents

I. Introduction..........................................................................................171

II. Background.............................................................................................172

A. A BRIEF HISTORY OF CANNABIS LAW AND CULTURE.................... 173
B. THE CANNABIS PLANT, PSYCHOTROPIC EFFECTS, AND THE GROWTH PROCESS...............................................................................177
C. THE FEDERAL BAN ON CANNABIS.................................................... 178
D. STATE LEGALIZATION OF CANNABIS FOR MEDICAL AND RECREATIONAL USE............................................................................180
E. THE UNITED STATES DEPARTMENT OF JUSTICE'S PROSECUTORIAL DISCRETION TO ENFORCE THE CONTROLLED SUBSTANCES ACT.......................................................184
F. THE LEGAL ENVIRONMENT BEHIND UTILITY AND PLANT PATENTS................................................................................................186
G. CURRENT PATENTS GRANTED FOR CANNABIS AND PATENT PENDING DEVELOPMENTS................................................................198

III. Analysis......................................................................................................201

A. PATENTABILITY OF CANNABIS VARIETIES: A CLEARER PICTURE OF THE UNDERLYING ISSUES............................................202
B. THE ANALYTICAL FRAMEWORK FOR GROWERS............................203
C. ALTHOUGH CANNABIS IS A SCHEDULE I DRUG UNDER THE CSA, POLICY CONSIDERATIONS UNDERLYING PLANT PATENTS AND THE FEDERAL CIRCUIT CASE LAW INDICATE CANNABIS VARIETIES ARE LIKELY PATENTABLE..........................205

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D. LEGISLATIVE DEVELOPMENTS THAT CAN CHANGE THE LEGAL ENVIRONMENT.......................................................................207

IV. Conclusion...............................................................................................208

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I. Introduction

"It made my heart thump, for I was certain it was gold."¹ James Marshall uttered these words when he discovered gold flakes at the Sutter's Mill in Coloma, California.² As word spread, thousands of miners rushed to California in search of riches, in what was known as the Gold Rush of 1849.³ Now, America has a new rush—the "green" rush,⁴ and once again, it is centered in the American West.

Marijuana, formally known as cannabis,⁵ is on the brink of becoming a legitimate business. Despite a long history of medical use and recreational consumption dating back to ancient times, marijuana regulation is a recent development.⁶ Popularly known as "weed," many believe cannabis culture is a counterculture aimed at destroying societal wellbeing in many ways.⁷

Recent state legalization allowing the recreational use and commercialization of cannabis in four jurisdictions⁸ has caught the eye of eager entrepreneurs, especially innovators of the product. However, legal impediments at the federal level⁹ hinder innovation in the cannabis industry from properly budding. As a result, scarce legal precedent exists for cannabis in the patent law arena. Given the federal prohibition on marijuana, patenting strains of the cannabis plant, and its derivative products, would seem to likely be prohibited. The word "likely" is used because, despite criminal legal impediments, marijuana has been patented,¹⁰ and more cannabis products are patent-pending.¹¹

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While a cannabis method-of-use patent has been granted to the federal government,¹² a unique cannabis strain has never been patented. This Note seeks to find concrete answers for a grower interested in patenting his or her unique cannabis strain. Because this is a novel patentable subject matter, this Note will explore patents in other industries that faced the same legal challenges afflicting cannabis variety patents. This Note asserts that equal challenges in other industries burden innovation in the cannabis industry.

This Note concentrates on the legal gray area around cannabis variety patents and how this uncertainty affects innovation. Part II outlines the legal environment surrounding marijuana patents and begins with a brief history of cannabis. Part II will explore the cannabis plant and discuss the federal ban on marijuana, state legalization for both medicinal and recreational use, and federal enforcement discretion on cannabis. Part II will survey utility and plant patents and potentially applicable case law analogous to the novel patentable subject matter discussed here. Lastly, Part II will conclude by discussing current patents granted for cannabis and patent-pending developments.

Part III will seek to demystify the legal fog surrounding cannabis variety patents by identifying the underlying issues and presenting clear answers. Part III will then conceptualize an analytical framework for cannabis cultivators navigating this new patentable subject matter. Next, Part III will assert that, despite federal opposition, cannabis variety patents are legal, given case law from the Supreme Court and Federal Circuit, as well as the policy considerations underlying patent law. Finally, Part III will identify legislative developments that would change the legal environment. Part IV will conclude that although cannabis cultivation is federally prohibited, policy considerations underlying plant patents and the case law from the Federal Circuit indicate cannabis varieties are likely patentable.

II. Background

To outline the legal environment surrounding patent law, this Part will look to the history of cannabis, popular culture, and law that has shaped the current state of the cannabis industry. Then, this Part will explain the cannabis plant itself, its physical characteristics, and the patentable end products from the growth process. This Part will go on to discuss the federal ban on marijuana, recent state legislation, and the federal governments prosecutorial discretion. Next, this Part will survey the statutory and policy background of utility and

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plant patents, and potentially applicable case law from the Supreme Court and the Federal Circuit. Lastly, this Part will examine previous patents for cannabis and patent-pending developments.

A. A BRIEF HISTORY OF CANNABIS LAW AND CULTURE

Cannabis has a history dating back to ancient times. The cannabis plant likely originated from Southeast Asia.¹³ The father of Chinese medicine, Shen Nung, utilized cannabis for medicinal purposes.¹⁴ From Asia, the cannabis plant spread to other parts of the world, including Europe.¹⁵ Hemp is a fibrous by-product of cannabis that has many applications.¹⁶ Hemp fibers were used to make sails for ships, fabric, and other products in colonial America.¹⁷ In fact, George Washington and Thomas Jefferson grew hemp on their plantations.¹⁸

Cannabis and most drugs enjoyed no regulation until the twentieth century.¹⁹ After the Shanghai Opium Commission and Hague International Opium Convention, Congress passed the Harrison Narcotics Tax Act of 1914.²⁰ The Act did not explicitly prohibit marijuana, but placed a tax on opiates to induce a suppression of drug markets.²¹

In subsequent years, popular culture shaped legislative efforts concerning marijuana. In 1936, the film Reefer Madness sought to persuade the American public of the dangers of marijuana use.²² The film portrayed teenagers who became addicted to marijuana and committed acts of violence.²³ One year later, Congress passed the Marihuana Tax Act of 1937.²⁴ The Act did not criminalize

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marijuana, but required people who dealt cannabis and its by-products to register with the federal government and pay a prohibitive occupational tax.²⁵ In 1969, the Supreme Court, under Chief Justice Earl Warren, struck down the Marihuana Tax Act. The Court found that the Act violated constitutional protections of self-incrimination by requiring persons dealing with marijuana to admit to trafficking by reporting to the Internal Revenue Service.²⁶ This concern, enunciated by the Warren Court, resonates for cultivators applying for cannabis variety patents today.²⁷

Marijuana, along with other drugs like LSD, was integral to the counterculture movement in the 1960's.²⁸ Along with the Vietnam War, cannabis usage was at the forefront of the American political conscious.²⁹ Most notably, Ken Kesey and the Pranksters set out across the country in a "magic" bus openly promoting the use of psychedelic drugs.³⁰

Cannabis was officially prohibited in the Controlled Substances Act (CSA) in 1970 during the presidency of Richard Nixon.³¹ The CSA was the first congressional act that actually criminalized marijuana.³² The congressional findings under the CSA state, "[t]he illegal importation, manufacture, distribution, and possession and improper use of controlled substances have a substantial and detrimental effect on the health and general welfare of the American people."³³ Further, Congress enacted the CSA out of concern for the production and distribution of controlled substances into interstate channels.³⁴ Under the Act, drugs are classified into schedules.³⁵ Schedule I drugs are substances that have a high potential for abuse, no currently accepted medical treatment in the United States, and which are not safe for use under medical supervision.³⁶ Cannabis is classified as a Schedule I drug.³⁷

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After the passage of the CSA, President Nixon encouraged Congress to enact legislation to enforce the CSA.³⁸ He declared that drugs were "public enemy number one."³⁹ This federal prohibition on cannabis and other substances would popularly be known as the "War on Drugs."⁴⁰ Later, Presidents Ronald Reagan and George H.W. Bush increased...