At present, seven of Canada’s prime ten cannabis patent holders are main multi-national pharmaceutical firms, in response to a joint analysis challenge by Washington D.C.-based New Frontier Information and London-based cannabis bio-technology agency, Develop Biotech. The record 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 planet, 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 firms 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 firms are ramping up their R&D and dashing to pursue patent safety. As we’ve referenced earlier than, information reveals that the variety of U.S. cannabis patent holders has almost 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 may very well 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 firms need to keep away from (akin to giving sworn statements to the USPTO that the corporate is, the truth is, possessing marijuana along with its patent software).
On a a lot easier, sensible notice 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 subject first presents a number of benefits (akin to having the ability to assert your patents in opposition to 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 software. In some instances, the next Examiner’s Report or Discover of Allowance might subject 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 superb possibility for accelerating examination through a request for Particular Order. A Particular Order might normally be obtained with out issue upon fee of a authorities payment of CAD $500 (on the time of writing this text, that’s USD $382.31). Compared, an identical program in the US for accelerating examination, particularly the Monitor 1 examination program, has a submitting payment of USD $4,000.
Below CIPO’s present service commonplace, a Particular Order will get the applicant a response inside two months from when the correspondence is obtained. Subsequently, through the use of a Particular Order, it could be potential to considerably shorten the size of time from requesting examination to patent grant.
One factor to notice is that in Canada, sure subject material is excluded from patentability. One main instance: vegetation. Vegetation usually are not patentable in Canada as a result of its legal guidelines present that “larger life types” (which incorporates vegetation and animals) usually are not patentable subject material. In distinction, a cell of a better life type, strategies of creating larger life types, in addition to use of a better life type, might represent patentable subject material. So, to ensure that a breeder or grower to acquire a patent, they have to be capable of present that the brand new cannabis cultivar will be recognized by technical options (like genetic modifications).
Because it’s potential to acquire patents for innovations associated to cannabinoid formulations, and so forth. in each Canada and the US, possibly the most effective method is to construct a balanced Canadian and U.S. patent portfolio. This may permit an organization to guard its belongings and maximize its protect in opposition to competitors in each jurisdictions.