At present, seven of Canada’s prime ten cannabis patent holders are main multi-national pharmaceutical corporations, in line with a joint analysis venture by Washington D.C.-based New Frontier Information and London-based cannabis bio-technology agency, Develop Biotech. The listing contains Ciba-Geigy AG (Switzerland) with 21 patents; Pfizer Merchandise (United States) with 14; and Telefonaktiebolaget LM Ericsson (Sweden) with 13. Merck Sharp and Dohme Company, the fourth largest pharmaceutical firm on the earth, has 11 cannabis-related patents, and not too long ago introduced a partnership to pursue collaborations with Intec Pharma Ltd., a clinical-stage biopharmaceutical firm that has developed a propriety oral drug supply system for supply of CBD and THC in treating ache. This bought me questioning: why are the mega corporations selecting to file their cannabis patents in Canada versus the US?
With cannabis now authorized in Canada for each medical and leisure use, in addition to authorized for medical use in 33 states and D.C. and leisure use in 11 states and D.C., it’s no secret corporations are ramping up their R&D and speeding to pursue patent safety. As we’ve referenced earlier than, information reveals that the variety of U.S. cannabis patent holders has practically quadrupled since 2016. The U.S. Patent and Trademark Workplace issued 127 patents containing the phrases “cannabis” or “cannabinoid” of their claims in 2018. Equally, the Canadian Mental Property Workplace (“CIPO”) issued 22 such patents in 2018. Whereas numbers on each side of the border are rising, it could possibly be that the pharmaceutical titans are heading to Canada as a result of the standing of “marijuana” in the US as a Schedule I substance creates patent-related points that mega corporations need to keep away from (akin to giving sworn statements to the USPTO that the corporate is, in truth, possessing marijuana together with its patent utility).
On a a lot easier, sensible be aware although, they’re most likely heading there as a result of it proves to be cheaper and faster to acquire cannabis patents in Canada. Given how quickly the cannabis business is evolving, acquiring patents within the cannabis area first presents a number of benefits (akin to having the ability to assert your patents towards opponents or utilizing your patents with definitive claims to enhance your negotiation place throughout enterprise transactions).
Wanting into the method, it could be a 12 months after the request for examination is made earlier than CIPO points a primary Examiner’s Report in a Canadian patent utility. In some instances, the next Examiner’s Report or Discover of Allowance might problem in about six to 9 months after the applicant’s response. This implies it could take rather less than two years (or extra) from the time of requesting examination to acquiring a Canadian patent, which is corresponding to the timeline in the US. However! The Canadian patent system provides a wonderful choice for accelerating examination through a request for Particular Order. A Particular Order might often be obtained with out issue upon cost of a authorities payment of CAD $500 (on the time of writing this text, that’s USD $382.31). As compared, an identical program in the US for accelerating examination, particularly the Monitor 1 examination program, has a submitting payment of USD $4,000.
Underneath CIPO’s present service commonplace, a Particular Order will get the applicant a response inside two months from when the correspondence is obtained. Subsequently, by utilizing a Particular Order, it could be attainable to considerably shorten the size of time from requesting examination to patent grant.
One factor to notice is that in Canada, sure material is excluded from patentability. One main instance: crops. Crops will not be patentable in Canada as a result of its legal guidelines present that “increased life varieties” (which incorporates crops and animals) will not be patentable material. In distinction, a cell of a better life type, strategies of creating increased life varieties, in addition to use of a better life type, might represent patentable material. So, to ensure that a breeder or grower to acquire a patent, they need to have the ability to present that the brand new cannabis cultivar might be recognized by technical options (like genetic modifications).
Because it’s attainable to acquire patents for innovations associated to cannabinoid formulations, and many others. in each Canada and the US, possibly one of the best method is to construct a balanced Canadian and U.S. patent portfolio. This may permit an organization to guard its property and maximize its defend towards competitors in each jurisdictions.