Intellectual Property Value in Marijuana Legalization: Possibilities, Challenges, Barriers

 

Intellectual Property in Marijuana Legalization: Possibilities, Challenges, Barriers

Dareem Scipio

As of midnight, on Monday 23^rd December, 2019 marijuana was decriminalized in Trinidad and Tobago.[1]For the marijuana user, this meant that the cultivation, use and possession of small amounts of marijuana was no longer a practice they had to conduct in secret. Indeed, the amendments to the Dangerous Drugs Act[2] was a welcomed move not only to the average marijuana user, but to an overburdened criminal justice system struggling to dispose of thousands of marijuana cases each year.

Steps have already been taken to liberalize the further use and exploitation of the drug with the introduction of the Cannabis Control Bill.[3] Essentially, the Bill seeks to provide a framework for the full legalization of marijuana, a move that will allow the sale, wide-cultivation and commercialization of the drug.

While the Bill goes through the various stages of legislative scrutiny, now is the perfect time for those interested in exploiting the economic benefits of marijuana to educate themselves on one critical aspect; leveraging any intellectual property rights in the activities that they may choose to pursue. There are (3) main categories of intellectual property rights (IPRs) applicable in this regard namely, plant variety rights (plant breeders rights), trademarks and patents. 

 

PLANT VARIETY RIGHTS

Plant Breeder’s rights are those rights associated with the creation and discovery of new plant varieties through plant breeding. In the context of marijuana cultivation, this may involve developing new exotic strains of the drug. The right gives the breeder the exclusive right to control the marketing, production for commercial marketing, and sale of the plant variety.[4] There are several requirements a variety must meet in order to obtain protection. According to the Protection of New Plant Varieties Act,[5]  a variety must be new (novel), distinct, homogenous and stable before any right is granted. 

A variety is new if it has not been marketed or sold in Trinidad & Tobago for more than (1) year before the application for protection is made or outside Trinidad and Tobago for more than (4) years before this date.[6]

The second criterion, distinctiveness, requires the variety seeking protection to be clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of the application.[7]Common knowledge may be established by the exploitation of the variety already in progress, the grant of a breeder’s right in the variety, the entry of the variety in a catalogue of varieties admitted to trade or in the register of varieties kept by a recognized professional association or inclusion of a variety in a referenced collection.[8]  Importantly, there is no specification or standard on what is required for a variety to meet the threshold of being distinct. It seems therefore than any characteristic that makes a particular variety stand out will be sufficient. In the context of marijuana plant breeding this may include for example, the THC content that makes up the plant.

As is relates to homogeneity or uniformity the characteristics of the new variety must be easily identifiable in a representative sample of the new plant variety in a manner that is consistent.[9] The varieties do not have to be a clone to the extent that even the slightest variation would lead to invalidation. Section 6 of the Plant Varieties Act[10] includes provisions for acceptable variations caused by vegetative propagation or differences is sexual reproduction.

The final criterion required to establish plant breeder’s rights in a new plant variety is stability. All that needs to be proved at this stage is that the relevant characteristics of the plant remain unchanged after repeated propagation.[11] The use of the language “relevant characteristic” implies that minor variances such as those included under the homogeneity test (example; differences in vegetative propagation) are accepted.

Thus, individuals interested in marijuana research and breeding and desirous of obtaining protection for new plant varieties should familiarize themselves with the aforementioned requirements in order to reap the economic benefits that comes from such protection. Beyond the individual, an effective legalization framework with accessible supporting mechanisms can lead to the creation of a marijuana tourism cottage industry where marijuana users from all over the world would visit Trinidad and Tobago to experience these new exotic strains. Ironically, this might be the gateway (no pun intended) to getting some young persons excited about agriculture as it clear that old and traditional techniques are not working. What is certain though, is that both the country and the individual farmers stands to benefit.

PATENTS

The medicinal value of marijuana and its components are now scientifically proven and with that comes a booming medicinal marijuana industry. An essential element of that industry is the use of patents to protect medicinal products, inventions and processes. In the Caribbean, Jamaica has already capitalized on the opportunities that this industry offer.[12] The Caribbean nation has developed a regulated and licensed cannabis industry to produce and distribute the drug for medicinal, therapeutic and scientific purposes through the establishment of  their own Cannabis Licensing Authority.[13] While I do not seek to cast away any opportunities for Trinidad and Tobago, a quick glance at our Patents Act[14] reveals two (2) possible challenges to consider. 

According to the Patents Act, a patent may be granted in respect of an invention where such invention is; new, involves an inventive step and is capable of industrial application.[15] Unfortunately, for Trinidad and Tobago the challenge starts on the very first step. This is because a novel invention is defined as any invention that form part of the state of the art.[16] Now you might be wondering, what is the state of the art? According to the Act, state of the art simply comprises all existing knowledge (whether a product, process, information, or anything else) which at the time of the invention has been made available to the public whether in Trinidad and Tobago or elsewhere.[17] As you can see the concept of state of the art is very wide. The important point to be made here though, is that while Trinidad and Tobago take its time in passing legislation that would allow for full participation in the medicinal marijuana industry, the state of the art keeps evolving. As mentioned earlier, Jamaica is already speeding ahead in this regard. This therefore sets a very high standard for persons to meet in the future. Indeed, some may argue that this high standard forms the DNA of patent applications and in any event, those coming later would be forced to display sheer innovation and creativity. However, while this may be true it does not change the fact that opportunities are being lost the longer we take.

The second challenge can be found in section 12 of the Act which deals with subject matter excluded from protection. Of particular note is section 12 (d) which excludes from patentability “therapeutic methods for the treatment of humans”. Ironically, one of the most popular uses of medicinal marijuana is for therapeutic treatment in humans. This is therefore a stumbling block for persons who have intentions of patenting any such method. The question of whether such exclusion is justifiable or necessary goes beyond the scope of this article. Despite these challenges, the patent door remains open for those innovative and able to maneuverer any legislative barriers.

Trademarks

Currently, the use of marijuana trademarks is illegal in Trinidad and Tobago. Firstly, section 8 (4) (a) of the Trademarks Act (2015) states that a trademark shall not be registered if it is contrary to public policy or morality. It may be that marijuana falls into this category since by being an illegal drug any use for trademark purposes clearly contravenes public policy. On the public morality point, marijuana is still viewed in a negative way by a great percentage of the population including religious leaders and parents. Marijuana is still viewed as a gateway drug that should be kept away from society’s eyes at all times. Thus, use of marijuana for trademark purposes will also fail on grounds of morality.

The other prohibition can be found in section 8 (5) which states that a trademark shall not be registered if its use is prohibited in Trinidad and Tobago. The legalization of marijuana will most definitely remove these prohibitions though one may find that the argument of being contrary to public morality may remain especially in religious circles.  Nevertheless, legalization will open the possibility for persons to use marijuana signs and symbols as part of their brand so as long as they are able to meet the requirement of distinctiveness. This would be particularly important to those persons interested in the sale and distribution of branded apparel, the sale of marijuana treats such as brownies and infused drinks and even companies engaged in marijuana research and development or the sale of the drug. As we all know, a trademark carries great value for businesses and persons interested in exploiting the economic benefits of marijuana should therefore keep this in mind and start exploring their creative possibilities from now.

In conclusion the intended legalization of marijuana in Trinidad and Tobago presents many opportunities for persons to exploit the economic benefits of the plant. Persons must be prepared however to adequately protect their intellectual property interest from the jump by adequately educating themselves about the various intellectual property rights involved such as plant breeder’s rights, patents and finally, trademarks.

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[1] Dangerous Drugs (Amendment) Act 2019.

[2] Dangerous Drugs (Amendment) Act 2019.

[3] Cannabis Control Bill 2020 (TT).

[4] Protection of New Plant Varieties Act 1997 (TT) s 15 (1).

[5] Protection of New Plant Varieties Act 1997 (TT) s 3.

[6] Protection of New Plant Varieties Act 1997 (TT) s 4 (1).

[7] Protection of New Plant Varieties Act 1997 (TT) s 5 (1).

[8] Protection of New Plant Varieties Act 1997 (TT) s 5 (2).

[9] Protection of New Plant Varieties Act 1997 (TT) s 6.

[10] Protection of New Plant Varieties Act 1997.

[11] Protection of New Plant Varieties Act 1997 (TT) s 7.

[12] Yvonne Baboolal, ‘Jamaica’s Medicanja to get US100M boost’ Express Newspapers (Trinidad, 11 April 2022).

[13] Steven Davenport,’ A regulated cannabis industry for Jamaica’ 2015.

[14] Patents Act 1996 (TT).

[15] Patents Act 1996 (TT) s 8.

[16] Patents Act 1996 (TT) s 9 (1).

[17] Patents Act 1996 (TT) s 9.