We help clients secure patents in the cannabis arts, including recreational and medical. The cannabis field has presented itself as a valuable new frontier for entrepreneurs seeking intellectual property protection in this booming industry.
No matter what the business or field, we fight for your intellectual property and business rights. Our strategy has always been a consultative approach with a strict focus on the goals of our clients. You may have heard that cannabis patents were an impossibility, but this is simply untrue. Any new and novel cannabis product or cannabis process that gives you a competitive advantage in the marketplace can be protected. Just like any other business, you deserve legitimate protection for your cannabis inventions. With the impending legalization of cannabis in many markets, you should be wary of consolidation in the industry and traditional competitors (alcohol and tobacco) infringing on your market share.
We have extensive experience successfully prosecuting patent applications through the U.S. Patent and Trademark Official (USPTO) to obtain valuable, battle-ready patents. We assist our clients in helping them understand their existing patent portfolios and determining a strategy for advancing their patent portfolios in the most cost-effective manner.
The Marijuana Patent Filing Process
The patent procurement process begins with conducting a disclosure interview with the inventor(s). If you are in the Bay Area, then we prefer to meet in person to conduct this interview. The disclosure interview can be thought of as a two-step process:
- Explaining the prior market and existing problems.
- Describing your invention in detail and explaining how your invention solves those problems that exist in the market.
In the first step, we ask you to explain the state of the market prior to your invention. Typically, this involves you describing what others have done in the field by describing existing products in the market, published papers, or patents. After we have a sense of the technical space, then we ask you to describe the problems with the existing solutions. Only until we understand the market and its shortcomings, do we continue forward to discuss your invention.
In the second step, we ask you to explain your invention in complete detail, and describe how your invention solves the problems with the prior art that you described in the first step. Inventors often use diagrams, sketches, simulation results, or prototypes to explain their invention. To draft a detailed specification, it is essential for the inventor to step through every novel aspect of their invention. Often there are multiple inventions where an inventor may have thought there to be only a single invention. Our objective is to obtain patent rights to the maximum you are entitled to. The disclosure interview is complete after we understand your invention, including the problem(s) your invention solves and how your invention operates.
After the invention disclosure meeting, we proceed with preparing your patent application. The patent application preparation process involves preparing a formal set of drawings, drafting an accompanying specification that explains your invention in detail, and a set of claims that defines what you understand to be your invention. The preparation process typically takes five to ten business days, depending on the complexity of your invention and the number of drawings involved. Our objective is to minimize the amount of time an inventor needs to spend reviewing drafts and giving feedback.
It is important to remember that a patent application is not merely a technical document, though it may appear so to a layperson. In reality, a patent application is a legal document and words are carefully chosen for specific legal reasons. Ultimately, we draft patent applications so that a Federal Court judge can understand your invention from the document.
Once your cannabis patent application is drafted, we file your patent application into the USPTO. Unfortunately, due to limited USPTO resources, it may take several years for an examiner to examine your patent application. That being said, this should not discourage or dissuade you. Consider the following painful scenario – you decide not to file for patent protection on your cannabis product, you build a business and sell your cannabis product, and over the course of a whole year of selling your cannabis product, your business turns out to be a huge success.
Unfortunately, you are now precluded from filing for patent protection! Now your competitors are free to copy your cannabis product and compete with you in the market by selling the identical product. Do not end up in this situation. You can always abandon your patent application if you really do not want to go any further in the process or have switched industries. But securing a filing date is key and earlier is always better.
Once your patent application is examined, this begins the process that is referred to in patent parlance as “patent prosecution”. (Yes, this is completely unrelated to criminal prosecution and has nothing to do with a Deputy District Attorney.) During the prosecution phase, the examiner typically identifies existing patents or published patent applications and rejects your claims based on this identified prior art during the examination process. Upon receiving a rejection, we discuss the cited prior art together and decide whether the examiner has fairly characterized the prior art in a way that renders your invention as not patentable. If the examiner has indeed “found” your claimed invention, then we will amend your claims to distinguish your invention from the cited prior art. Otherwise, we will argue that the cited prior art does not render your invention unpatentable and that your claims ought to be allowed. On rare occasions, we may decide to abandon your patent application and save you costs on prosecuting an application that is unlikely to ever be allowed. Ultimately, our objective is to obtain a notice of allowance from the Patent Office indicating that your claimed invention is patentable.
Cannabis Patent Filing Practice Areas
A cannabis patent is a legal instrument that may entitle its owner to monetary damages against infringing parties. A patent is a right granted by the US government that excludes others from making or selling the claimed invention without the patent holder’s authorization. Given the rapidly changing landscape and the complexity of much of the technology involved, it is important to have an attorney with both a concrete grasp of the industry and of the technical aspects underlying innovations. We bring both to the table.
Provisional versus Non-Provisional Utility Marijuana Patent Applications
A provisional patent application is a temporary application filed with the USPTO expiring within 1 year. Provisional patent applications are not examined by the USPTO and are held in confidence. Prior to the expiration of the provisional patent application, you will need to file a non-provisional patent application to initiate the examination process.
A non-Provisional Utility Patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. A non-Provisional Utility Patent application can claim priority from the filing date of a provisional application. The non-provisional application consists of a detailed description (patent specification), formal drawings, and claims together with official forms and correspondence relating to the application. It is important that the non-provisional application is crafted well, as this document can eventually yield a patent.