The Highs and Lows of Patenting Marijuana Strains

After over 95 years of prohibition, recreational usage of marijuana will be legalized nation-wide on October 17thWhile the Cannabis Act will transform cannabis breeding from an illegal cottage industry to a legitimate profession, there has so far been no corresponding change in plant breed intellectual property protection. While there are some protections under existing Canadian law, they are weak by international standards.

Cannabis breeding is a complex process that can take years. It requires patience, sensory acuity, long-term planning, and a working knowledge of genetics. Through their work, breeders can greatly enhance the commercial value of their product. They can create plants that give greater yields, disease resistance, hardiness, and, of course, drug potency, among many other desirable and profitable traits.

Cannabis breeding can also be expensive. To recoup expenses, developers  rely on profits from their new strains. If there is nothing preventing competitors from selling the developer’s strain, without first paying the developer for the research and development needed to create the strain, then there is very little financial incentive to develop these new breeds. If Canada is to encourage better, more efficient, and more profitable strains of Marijuana, then the government will need intellectual property laws that can protect the investments of time and money that Cannabis breeders put into their work.

Canada does not currently offer patent protection for novel plant breeds themselves, a legal conclusion which stems from an almost contradictory pair of rulings. In the landmark 2002 Supreme Court patent case of Harvard College v Canada (Commissioner of Patents), it was decided that “higher lifeforms”, which include plants, could never be subject to a patent protection per the Patent Act. This ruling was complicated two years later in Monsanto Canada Inc. v SchmeiserSchmeiser’s ruling decided that, while it was true that a plant itself could not be patented, a man-made gene within a plant could be. If a plant contains such a modified gene then, for all practical intents and purposes, the plant itself could be patented because “where a defendant’s commercial or business activity involves a thing of which a patented part is a significant or important component, infringement is established”.

While these rulings may satisfy Monsanto and the other members of the (extremely limited) genetic-insertion community, they are of little recourse to those who breed new plant strains through more traditional means, like cross-breeding. Patent protection would therefore benefit only the most high-end marijuana breeders.

All hope is not lost, however, for marijuana breeders who don’t engage in genetic insertion, thanks to the 1990 Federal Plant Breeders Rights Act (PBRA). This Act provides protections to plant breeders if they can demonstrate that a strain they have created is “new”, clearly distinguishable from all existing varieties, stable in its essential characteristics, and sufficiently homogenous across plant generations. To date, a handful of marijuana strains have been protected through the PBRA, and it has the potential to give some relief to breeders.

The shortfall of Plant Breeders Rights is that the protections they give are weaker than those protections given by the Canadian patent regime. A patent grants the right to prevent others from using, selling, offering for sale, and importing the patented invention into Canada for a period of 20 years. By comparison, Plant Breeders Rights exclude others from selling, producing, exporting, importing, making repeated use of, conditioning, and stocking the seeds of the plant, also for a period of 20 years. While these collections of rights are superficially similar, Plant Breeders Rights come with some major exceptions not shared by a patent. Anyone can use the seeds and product of a protected plant for private non-commercial purposes, for experimental purposes, and for breeding purposes. At the same time, the “farmer’s privilege” allows for farmers to replant the seeds from plants they have obtained legitimately in perpetuity.

While Plants Breeders Rights are a good start, full patent protection is necessary if Canada wants to fully encourage large-scale development and experimentation in marijuana breeding. Full Patent protection would be an excellent way to encourage the investment of time and money that breeding requires, and would allow for smaller corporations to protect their investments better than the current gene-insertion protections. While it is true that this could result in initial monopolization of certain desirable strains, the benefits of breeding protection would extend to the cannabis-enjoying population after just 20 years. Extending these rights would not be unprecedented, as plant strain patents are available both in the USA, and in the European Union to a limited extent. Canada should take example from the successful plant strain patents found in the international community, instead of letting a potentially valuable incentive for agricultural development go up in smoke.

Keenan Fast is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

One Comment
  1. This is a great overview of existing protections for plants, but what are the unique features of cannabis that you think warrant greater protection than other plants? Or would you recommend strengthening protections for all plants?

    It seems to me that additional incentives for the cannabis industry are unnecessary. Since Canada is the first developed nation to establish federal regulations legalizing recreational use, R&D here will have a strong head start on other countries. Furthermore, under s. 62(2) of the Cannabis Act, licensed producers are unable to import or export cannabis except under a narrow set of exemptions, so the Canadian market is effectively insulated from external competition. Moreover, the patentability of plant breeds has not deterred innovation. A quick search of the Canadian Patents Database reveals 1,004 patents with the keyword ‘cannabis’ or ‘cannabinoid’, including patents for genetically modified cells, methods of extracting the active ingredient, and pharmaceutical dosing. Besides, innovators already have effective mechanisms of controlling unique strains outside of the patent scheme, since cannabis products sold to consumers typically do not contain seeds.

    If, at some point in the future, policy-makers wish to incentivize cannabis research, they could consider alternative tools such as tax frameworks. There are exigent reasons why plants should not be captured under the Patent Act, including the dilemma of sufficient disclosure. According to the Bargain Theory, a patent is a reward for enabling other skilled persons to fully employ the invention, which may not be possible in the case of plant breeds.

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