First-Ever Cannabis Patent Infringement Lawsuit Was Recently Filed
Protecting intellectual property can be challenging for cannabis businesses. While patent law is one area where protection is available, the first patent infringement lawsuit involving cannabis was just recently filed.
Despite state-level legalization, the U.S. Patent and Trademark Office (USPTO) continues to refuse federal trademark registration of medical marijuana and other cannabis-related trademarks. In addition to citing the federal Controlled Substances Act (CSA), the USPTO also cites 37 C.F.R. § 2.69, which states that “[w]hen the sale or transportation of any product for which registration is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.”
Cannabis companies have had far better success obtaining patent protection. According to a study conducted by Innography in 2017, there were a total of 66 U.S. patent grants and 62 U.S. patent applications related to medical marijuana. The U.S. government even holds a patent (No. 6,630,507) for the potential use of cannabinoids to protect the brain from damage or degeneration caused by certain medical conditions. The U.S. Food and Drug Administration (FDA) also recently approved Epidiolex, the first approved cannabis-based drug.
United Cannabis Corporation v. Pure Hemp Collective, Inc.
Late last month, the United Cannabis Corporation of Denver, Colorado (“UCANN”) filed a patent infringement lawsuit in the U.S. District Court of Colorado against Pure Hemp Collective Inc. of Conifer (“Pure Hemp”). UCANN alleges that the rival cannabis company copied its cannabinoid medical product formula. The patent at issue is U.S.P. 9,730,911, which protects “liquid cannabinoid formulation, wherein at least 95 percent of the total cannabinoids is cannabidiol (CBD).”
According to the suit, UCANN discovered the infringement after conducting lab tests on a purchased bottle of Pure Hemp’s Vina Bell tincture. According to the suit:
The analysis revealed that the product contains a cannabinoid formulation that directly infringes one or more claims of the ’911 Patent, including exemplary claim 10: “A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is cannabidiol (CBD).” Specifically, the Vina Bell 5000mg product contains a cannabinoid formulation wherein at least 95% of the total cannabinoids is CBD. Pure Hemp sells other cannabis products with similar cannabinoid compositions that infringe other claims of the ’911 patent.
UCANN’s suit seeks a permanent injunction against Pure Hemp, along with compensatory damages. The company is also seeking treble damages for Pure Hemp’s alleged “willful” infringement, as evidenced by its decision to continue selling the patented formulations after receiving a cease and desist letter in May of this year.
As the first “test case,” United Cannabis Corporation v. Pure Hemp Collective, Inc. has the potential to set the standard for how federal courts handle cannabis-related infringement suits. If successful, the case could also spur additional patent infringement litigation in the industry. Of course, given the fact that cannabis remains illegal under federal law, there is always the possibility that the court could dismiss the case.
If you have any questions, if you are interested in exploring these options or if you would like to discuss the matter further, please contact me, Jason A. LaBerteaux, at 201-806-3364.
Disclaimer: Possession, use, distribution, and/or sale of cannabis is a Federal crime and is subject to related Federal policy. Legal advice provided by Scarinci Hollenbeck, LLC is designed to counsel clients regarding the validity, scope, meaning, and application of existing and/or proposed cannabis law. Scarinci Hollenbeck, LLC will not provide assistance in circumventing Federal or state cannabis law or policy, and advice provided by our office should not be construed as such.
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