8 Steps Cannabis Professionals Can Take To Protect Intellectual Property

Columns - Tomorrow in Cannabis

How to conceptualize and design a patent to safeguard your original ideas.

March 4, 2021

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Have you ever conceptualized what you believe is a unique and novel idea and asked yourself if the discovery is patentable?

These ideas do not come about often, but when they do magically occur, there are many factors that determine whether to pursue a granted legal patent.

What follows are just a few considerations one must make throughout the patent application process.

What’s a patent?

A patent is a government license granting its holder the right to determine who or what (if anyone or any thing) gets to use, license, (re)create or sell the patented invention for a certain period of time.

There are a few considerations to ponder prior to filing a patent. First, when one files for a patent, they state all aspects of the invention in the patent application, all of which will ultimately be published and become public information at some point in the future. Because of this, some inventors and companies choose not to file for patent protection in lieu of retaining the intellectual property as a “trade secret” (think of the unpatented, secret recipe of Coca-Cola).

Second, one must consider the patent defense process can be very expensive at best, and beyond comprehension at worst.

I was once told a patent grants one the right to litigate, meaning once you have a granted patent you get to potentially spend up to millions of dollars to protect the patent/intellectual property, and/or sue all persons or companies that violate the patent.

For example, one cannabis company that allegedly was in violation of another’s cannabis-related patent was sued by the patent holder for what amounted to about $4,500 in damages. The patent holder likely spent much more in legal fees to enforce the patent, a sign of the importance of protecting your IP (and of creating case law in cannabis).

The only alternative to defending a patent is to not defend it, which in essence makes it pointless to file a patent in the first place. As an adviser once told me: “Your patent is only as strong as your ability to defend it.”

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The Patent Process: An Overview

1. Research and research again.

The first thing I or a patent attorney does when considering whether to file a patent is to conduct a thorough art patent search to make sure that no prior art exists, meaning that no one has previously filed a similar patent application or has been awarded a patent for the same or similar invention. According to the U.S. Patent and Trademark Office, patents may protect against independent discovery.

A prior art search will be conducted multiple times throughout the application process, whether by the patent attorney or by a patent examiner assigned to review your case/application. I once had a patent application stopped dead in its tracks because someone had filed a similar application less than a year prior to my application, which did not publish nor appear in a prior art search the previous year, so I spent considerable amounts of time and money for an application that could not be granted. It is in your best interest to perform multiple prior art searches.

2. Write the patent.

Depending on the invention, patent applications can be very expensive to file. Someone must draft the first version of the application so that it can be refined prior to filing. A patent attorney can perform this step, but obviously charges for the service, and they may not understand all the nuances or particular aspects of your invention.

I taught myself how to write a patent by reviewing the patent applications that were already granted. They all have the same format: claims, summary, abstract, art, etc. By following these established guidelines, I was able to formulate the basic framework of a patent application that was intelligible, that included verbiage included for protection or to prevent circumvention of the patent, as well as information to strengthen the validity of the patent. By writing the initial draft yourself, you can make your invention and intentions clear, and a patent attorney can use that framework to make adjustments based on his or her legal expertise or flag anything missed that could potentially hold up the application process.

An important point: while performing this exercise, you must include every possible claim to prove novelty, inventive steps, or that the invention does not previously exist anywhere in the world at any time.

3. Find/secure a patent attorney.

If possible, secure a patent attorney fluent in the field your invention falls into; in my case, with my current patent application, I chose a patent lawyer with a chemistry degree and background. The lawyer’s science background was invaluable when the final draft of the patent was being written. He completely comprehended the invention, and he was able to include very descriptive verbiage and examples for the claims, as well as bolster many points of protection to prevent circumvention by others.

To some degree, your patent is only as good as the person writing the final draft of the application. An intelligent lawyer is also a must-have when it comes to addressing any objections a patent examiner may have.

4. Secure funding/investors.

Even a basic patent filing can be very expensive to submit, with costs ranging from a few hundred to tens of thousands of dollars. There also are maintenance fees beyond four, eight and 12 years after the patent is issued. Primarily, funds will go toward legal expenses to file, maintain and protect your patent for up to 20 years. Unless the patent applicant is wealthy, it is sometimes necessary to seek funding/investors. If an invention is useful and/or profitable, one should be able to secure an investor.

But that can be easier said than done. Even with a good idea and a granted patent, it can be difficult to secure money to commence manufacturing a given patented invention. If the invention is a new process or similar intellectual product that does not require the applicant to manufacture a hard good, it eliminates the need to construct a working prototype, which can make securing funding a bit simpler, but not by much.

The key to all of it is to believe in yourself, your invention and to be perseverant. One patent I filed has been going through the patent process for more than five years and involves interviews with a patent examiner to refine specific claims and address other issues.

5. Source a manufacturer.

If your patented invention involves using a piece of equipment or hardware, the patent does no good if a prototype of the device does not exist. Therefore, it must be manufactured. Sourcing a manufacturer is where perseverance is relevant yet again. The logical starting place when sourcing a manufacturer is to approach a manufacturer of similar equipment or products.

This, however, can be dicey—any good lawyer will recommend that both parties sign a non-disclosure agreement (NDA) to protect everyone involved. That said, NDAs only keep honest people honest, meaning a dubious manufacturer can always violate the NDA purposefully and steal an invention, wait to be sued and, as they say, “ask for forgiveness later,” settling any lawsuit for pennies on the dollar.

My lawyer recommended that I do not share information with persons or companies I do not trust 100% regardless of any NDAs in place.

With that in mind, when sourcing a manufacturer to build your prototype, it would behoove the patent applicant to know that foreign companies are more difficult to sue than domestic ones. Do your due diligence when considering a manufacturer to work with, as many do not have the inventor’s interest as a priority.

6. Get a second expert opinion.

Because of the complexity of one of my patent applications, I felt it beneficial and necessary to pay for and obtain an independent legal review and perspective on the patent application prior to submission of the final draft. The logic being that fresh eyes may reveal something, be it big or small, that has been overlooked or neglected. So, I strategically hired the No. 1 intellectual property law firm to review my patent and add any comments to bolster its strength. Hiring this firm also helps protect the patent in the future if litigation is needed.

7. Trademark the product if necessary.

Obtaining a trademark is much less expensive and more straightforward compared to getting a patent granted—a trademark application only costs a few hundred dollars. But if you have developed a patented product destined for sale or use, you may choose to protect the name of the given product or process by applying for a trademark of the name. It may be best to obtain the trademark sooner rather than later, ideally before a patented product is ready to go to market or be sold. However, it is a gamble to obtain a trademark on a name for a product that is classified as patent pending. But if it appears as if a patent is going to be awarded, it is good to consider beginning the trademark process.

8. Is there a market for the product you intend to patent?

Just because a patent can be granted for a given item or method does not necessarily mean it has commercial value or that it will generate revenue for the inventor or patent holder. Some patents have been strategically applied for the simple reason of preventing a competitor from utilizing the technology or method to produce a given similar product as the patent holder. For most cannabis companies, filing a patent application with the sole intent of trying to deny competitors the use of a product or process is likely an expensive exercise. Focus your patent application energies on whether your product can be delivered to the market, or whether it offers you a competitive advantage in your market.

Kenneth Morrow is an author, consultant and owner of Trichome Technologies. Facebook: TrichomeTechnologies Instagram: Trichome Technologies k.trichometechnologies@gmail.com