On July 30th, Golden, CO-based medical marijuana biotech firm United Cannabis Corporation filed a suit alleging patent infringement claims against Conifer, CO-based wellness company Pure Hemp Collective. The suit, filed in the District of Colorado, involves the assertion of cannabis patent claims which cover liquid formulations of highly enriched extracts of plant cannabinoids.

The patent at issue in this case is U.S. Patent No. 9730911, titled Cannabis Extracts and Methods of Preparing and Using Same. Issued last August, it claims a liquid cannabinoid formulation wherein at least 95 percent of the total cannabinoids is tetrahydrocannabinolic acid (THCa). The resulting invention addresses the need for providing more effective and safer cannabis extracts for medical uses through an extraction procedure that provides the desired active ingredients for the medical purpose.

In its suit, United Cannabis notes that it has been involved in the medical cannabis industry for nearly 20 years. The company’s proprietary technology includes the use of suspending both phytocannabinoids, chemical compounds which treat conditions and diseases by imitating compounds in the human body that mediate communication between cells, and cannabinoids with or without specific combinations of cannabis-derived fragrant oils. United Cannabis practices the ‘911 patent in its line of Prana Bio Nutrient Medicinals products which are useful in the alleviation the symptoms of various conditions such as chronic pain, neuropathy, Crohn’s Disease, post-traumatic stress disorder, epilepsy, autoimmune disorders and more.

United Cannabis alleges that Pure Hemp has engaged in willful infringement of the ‘911 patent. Pure Hemp’s Vina Bell 5000mg product, which was purchased and tested for chemical composition by United Cannabis, contains a cannabinoid formulation which allegedly infringe upon at least claim 10 of the ‘911 patent, which claims a cannabinoid formulation wherein at least 95 percent of the cannabinoids is cannabidiol (CBD). United Cannabis attempted to engage Pure Hemp in licensing discussions in early May of this year but Pure Hemp continues to sell the allegedly infringing products without a license.

Such a case is interesting because of the unusual legal status of marijuana and cannabis products which creates a dichotomy in how such products are treated in the intellectual property sphere. Although cannabis-related formulations and products can be patented, the Schedule I status of marijuana under the Controlled Substances Act usually leads to the rejection of marijuana-related trademark applications. According to Neil Juneja of Gleam Law, there is no double standard where it comes to the availability of patents or trademarks for cannabis products. “Just because the patent and trademark offices are in the same building doesn’t mean they draw their power from the same constitutional provision,” he said. Whereas patent grants are derived from Article 1, Section 8, Clause 8 of the U.S. Constitution, Congress’ ability to grant trademarks comes from the Commerce Clause at Article 1, Section 8, Clause 3. “Trademarks require the legal use of the mark on commerce whereas patents don’t, they just have to claim a usefulness. One is requires use, the other is an exclusionary right,” Juneja said.

Juneja had serious doubts, however, that the patent at issue in this case filed by United Cannabis would survive a validity challenge. “As far as the claims are concerned, I’ve never seen a weaker cannabis patent in my life,” he said. “All they did was take one secondary metabolite of cannabis and create the broadest independent claim.” Juneja said that there were a great many products in the cannabis market providing a THC concentration of 95 percent and that such products have been made for two generations. “All it takes is pouring some alcohol over cannabis to get a THC concentration in excess of 95 percent. You can do it at home if you buy some Everclear. I don’t understand how that could be considered patentable.”

One reason why such a weak patent might exist in the cannabis space is because of the lack of available prior art in the sector. “There’s two generations of practitioners trying not to be noticed and not to get arrested,” Juneja said. “You don’t really find prior art outside of High Times magazine.” Juneja recently gave a talk at an American Bar Association event and by that time, up to 11,000 patent applications mentioning cannabis had been filed and around 3,000 of those had resulted in issued patents. One of the earliest such patents was issued in 2003 to the U.S. Department of Health and Human Services covering a therapeutic formulation of cannabis for the treatment of diseases. “So simultaneously, while the U.S. federal government holds a patent for the use of cannabis to treat cancer patients, the Drug Enforcement Administration says that there’s no medical benefit to cannabis,” Juneja said. “It’s really tough to figure out why the government thinks that there’s no medical use in light of its own patent covering the use of cannabis for medical purposes.”

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