What Marijuana Businesses Need To Know About Enforcing Patent Rights (Op-Ed) – Medical Marijuana Program Connection

A recent ruling opens the door for cannabis patent owners to consider enforcement actions to protect the value of their patent rights and obtain damages in federal courts.

By Jayashree Mitra, Fox Rothschild LLP

As states across the country legalize cannabis for recreational and medical use, the question of intellectual property rights is likely to become a growing concern for patent owners. Even in the absence of federal legalization, patents covering cannabis-related subject matter are routinely being sought and granted.

Patent enforcement has been lagging in comparison, with only a handful of actions being initiated to enforce patent rights.

There could be multiple reasons for this, and a key concern has been the perception that federal courts may be unwilling to enforce patents where infringement allegations concern the use, possession and/or distribution of products that are prohibited under federal law. That concern may soon change in light of a recent decision from the U.S. District Court for the Central District of California, which recently held that the illegality doctrine did not bar a patent owner from asserting a cannabis-related utility patent against a company involved in cannabis extraction.

Although the court’s ruling in Gene Pool Techs., Inc. v. Coastal Harvest, LLC* was tailored to specific facts where the court found that the allegations were broad enough to include infringing activities that were not prohibited under the Controlled Substances Act…