Patents and Illegal Inventions

??By Dale Hunt, PhD, JD – Hunt IP Law?

FICTION AND FACTS ABOUT HOW THE USPTO TREATS CANNABIS AND PSYCHEDELICS

A Juicy Conspiracy Theory That Doesn’t Want To Die

Maybe you have heard conflicting and confusing stories about cannabis ?intellectual property (IP) and the federal government. Maybe they don’t make any sense or are even hard to believe. There are certainly some strange stories out there.

One of my favorites is a conspiracy-sounding story/question I actually hear and have to disprove quite frequently. It goes like this: The US government holds “The Patent” on cannabis and that’s why nobody else can patent it.

Friends, that’s not correct – not even close. The kernel of truth in this story is that there are several dozen cannabis-related issued patents and patent applications that list the United States government as owner or co-owner.? In these patents and applications, research was done at some government agency – most commonly the Department of Health and Human Services, but also at Energy, Agriculture and even the Navy – and, in someone’s view, the research ended up being worth patenting.

So, these approximately 50 patents and applications are among the thousands of cannabis-related patents granted and applications published by the USPTO. So much for the government-monopoly myth;?it’s a myth, plain and ?simple.?Now you know…tell your friends.

This same situation applies to patents on psychedelics and pretty much any other "illegal" subject matter. This is not just about marijuana.

Here’s a True Story That Is Puzzling At First

But here’s a strange story that really is true:?The single government agency in charge of granting two major kinds of federal IP protection – the United States Patent and Trademark Office (USPTO) — ?treats federally illegal subject matter in completely opposite ways when it comes to patents versus ?trademarks.?

That might seem crazy, irrational, maybe less believable than the government monopoly story I just debunked in the previous paragraphs. However, it’s true and there’s actually a reason so simple ?that this won’t need to be a very long post.

As demonstrated above, the USPTO is not hostile to cannabis patents.?It has been granting cannabis-related patents since the 1940s at least.?But try filing a trademark application for anything that hints at a connection with a product containing THC and wait for the 99 questions you will get from the trademark examining attorney.

So why this big difference in treatment??It’s actually simple: it’s a ?matter of the very laws that define the requirements for getting a patent versus those for getting a trademark.?And, when the USPTO applies those laws these two extremely different outcomes follow.

Patents are For Inventions that Are New and Not Obvious – That’s It

The patent statute is quite clear in defining what it ?takes to get a patent.? Without getting lost in a lot of other requirements irrelevant to this comparison, the key requirements are ?that, when someone claims to have invented something, the patent examiner’s job is to compare the claimed invention to what was known before (referred to as the ‘prior art’) and determine whether the ?claimed invention is new and whether it is obvious.? If the invention is ?new and non-obvious, it qualifies for a patent.? Notably, the examiner ?is not in charge of asking whether it is 1) safe, 2) legal, 3) free of ?other people’s patent rights, 4) clear of any regulatory hurdles, 5) ?environmentally friendly, 6) politically correct, etc. … you get my ?point.

Trademarks are For Goods and Services used Commercially Across State Lines (Legally, That Is)

In contrast, trademark law has a very different requirement, because federal trademark rights accrue from legal ‘use in commerce’ – this means use in commercial activity across state lines.?You can probably tell where this is going…so long as cannabis is ?federally illegal, it will be impossible for ‘use in commerce’ to occur; therefore, it will be impossible for federal trademark rights to accrue.?Thus, it is simply not possible for something that cannot ?legally move across state lines to qualify for a federal trademark. Can’t happen. Period.

So, to put it simply, this isn’t a matter of trademark examiners being mean while patent examiners are nice.? It’s merely a matter of ?logical/legal impossibility in one case (trademarks) and issues of illegality being irrelevant in the other case (patents).

So whether that myth about the government conspiracy to “own the marijuana patent” will ever die off or not, hopefully this patent/trademark ?paradox finally makes sense.?And it doesn’t seem to stand any chance of ?changing until the laws change that govern movement of cannabis and psychedelics across state lines.

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The opinions expressed here are the author’s own and do not necessarily reflect those of his professional colleagues or his clients. Nothing in this post should be construed as legal advice. Meaningful legal advice can only be provided by taking into consideration specific facts in view of the relevant law.

? 2025 – Hunt IP Law?