Legal: Kilburn & Strode look at protecting IP in cannabis

In new and rapidly growing technical/commercial fields, such as cannabis, there is often a land-grab to secure broad intellectual property rights and protect your market position long into the future. Acting decisively and early can pay dividends. Law firm Kilburn & Strode’s patent attorney, James Snaith and trade-mark attorney Ben Scarfield give an overview on how to protect your IP.

Cannabis may be the first commercial product to undergo decriminalisation on a major scale since alcohol in the 1920s. However, some of the most sweeping effects are not coming from recreational products, but from pharmaceutical and health products. Breakthroughs in research are yielding effective cannabis-based therapies for a variety of medical indications, while the relaxation of rules around the use of natural compounds within the plant has led to a surge of high-street retailers stocking new and inventive products.

What are cannabinoids, THC and CBD?

Cannabis products are typically based on compounds naturally occurring in the cannabis plant, known as cannabinoids. The identification, isolation and dosing of these cannabinoids is often the keystone to any new cannabis product.

The most notable cannabinoid is Δ9-tetrahydrocannabinol, or THC. THC is the primary psychoactive compound in cannabis, and the cannabinoid most commonly associated with recreational use. Cannabidiol, or CBD, is another major constituent cannabinoid. CBD is understood to modulate and mellow psychoactive effects (including the effects of THC), and typically makes up around 40% of the cannabinoids in cannabis. The ratios of these compounds in a cannabis plant strain can therefore strongly influence its psychoactive effect.

The distinction between CBD and THC cannabinoids is important, as the legality of a cannabis product on the market depends on the amounts of each.

Intellectual property protection for cannabis

Intellectual property rights act as an incentive for businesses to commercialise new/novel products and industrial processes, stimulating innovation by offering a legal monopoly to inventions, brand names, designs and creative works. Now, cannabis-oriented businesses are relying on these rights in the same way that traditional industries have, albeit often operating at the edge of what is and isn’t permitted from a regulatory and criminal perspective.

Public recognition of cannabis as both a bona fide pharmaceutical ingredient and an everyday supplemental product is perhaps the most intriguing aspect to this development. For example, SativexTM/NabiximolsTM is approved for the treatment of spasticity. In addtiion, EpidiolexTM is approved for the treatment of seizures in rare and severe forms of childhood epilepsy.

Cannabis is touted as a wonder-drug by many. Its effects on the human body are numerous and these approved therapies are the tip of the iceberg, and more will surely follow.

Inventions in the cannabis field, medicinal and beyond, are coming thick and fast. Patent protection is typically used to protect such inventions. This protection is generally granted for inventions that provide a new way of achieving something or provide some improvement/advantage compared with what already exists.

For example, a new cannabis-based drug that can treat a condition better than any existing drug would be an ideal subject for patent protection. The number of European patent applications published over the last five years and mentioning the words ‘cannabis’ or ‘cannabinoids’ are exponentially increasing at present.

Clearly, there is increasing interest in protecting novel cannabis-based inventions.

Isolating the compounds, creating and then protecting a product is only the first step in commercialisation. Once that product heads towards the market, the same entities must consider protecting their new brands by registering their trade marks. A trade mark is defined as anything that acts as an indication of origin for the goods. A registered trade mark allowing the holder to prevent third parties from using identical or similar trade marks, in relation to identical or similar goods, if that use would lead to a likelihood of confusion as to the origin of those goods.

Choosing, protecting and promoting a new brand for new pharmaceuticals which require regulatory approval has always been fraught, with cannabis-based goods facing a unique combination of problems. Away from complex pharmaceuticals, businesses are seeking to capitalise on the booming market for more loosely regulated new cannabis-based health products are facing their own problems when registering trade marks.

Cannabis legality and practice in the US and Europe

While cannabis and many cannabinoids are illegal for recreational use in many European countries, this does not present a barrier to patenting inventions relating to cannabis in Europe. However, this is not the case around the world. In the US, for example, federal (as compared with state) illegality can cause challenges when seeking patent protection for cannabis inventions.

Although scientists agree cannabis has a myriad of useful properties, the legal landscape is constantly changing. 2021 promises to see even more US states decriminalising or legalising recreational cannabis. Elsewhere, most EU countries now allow, or are considering allowing, the medical use of cannabis or cannabinoids in some form. However, the approaches taken vary widely in terms of both the products authorised for sale and the governing regulatory frameworks.

When seeking to protect trade marks for goods which tread the line of legality, the respective national trade mark authorities’ decisions to grant trade mark registrations must tie in with strict guidance on morality, public policy.

This mixing pot of regulation, legislation and commercialisation is constantly evolving, and it can be difficult to gauge what is and isn’t permitted.

Many states around the world impose restrictions on obtaining intellectually property protection in the field of cannabis and other naturally-derived substances. Kilburn & Strode legal advisors are well-placed to help navigate the nuances of obtaining protection around the world.