Nearly three years have passed since Canada legalized cannabis in October 2018. Accordingly, under s. 151.1 (1), the Cannabis Act is due for revision this fall. The current cannabis regime has a limited scope of intellectual property (IP) protection, which includes plant breeders’ rights, trademarks, patents, trade-secrets and industrial designs.
Plant breeders’ rights allow for the protection of new cannabis varieties, which can give licenced producers a 20-year monopoly on their unique strain of cannabis. This is not to be confused with the 20-year monopoly granted by patent protection. While plant breeders’ rights protect the plant itself, plants cannot be patented. The Supreme Court of Canada in Harvard College v Canada (Commissioner of Patents) held that “higher lifeforms”, which encompasses plants, are not eligible for patent protection. However, the subsequent ruling in Monsanto Canada Inc. v Schmeiser held that while a plant itself cannot be patentable subject matter, the genes and modified cells that make up the plant are eligible for patent protection.
Despite the cannabis plant itself not being eligible for patent protection, novel pharmaceutical compositions, such as cannabinoids, therapeutic uses of cannabis, and cannabis-related products, machines, processes and methods, are patentable. Indeed, since the Cannabis Act received Royal Assent in June 2018, 418 patent applications related to various methods, processes and apparatuses have been filed.
The difference in the scope of protection between patents and plant breeders’ rights may appear small, but plant breeders’ rights create loopholes which make enforcement more challenging. For example, the Farmers’ Privilege allows farmers to save and replant second generation seeds on their own property rather than purchasing new seeds every year. For cannabis producers, this means that a licensee of a protected cannabis variety could save propagating material in order to replant year after year. This exception can be problematic for cultivators who want to protect their cannabis but may not be eligible for patent protection.
Trademarks are also an important IP strategy. However, the strict packaging and advertising restrictions regarding brands and logos on cannabis products limits the utility of trademarks. Under the Cannabis Act and Regulations, cannabis products may display the brand name and one additional brand element, but the size, colour and location are heavily regulated. The limited visibility and promotion make it difficult for producers to cultivate brand loyalty. Fortunately, the recent introduction of scent and taste trademarks in June 2019 offers a new IP strategy for cannabis producers. Producers will be required to demonstrate that the scent or taste is distinctive of their product. Currently, the Canadian trademark database includes only two taste marks and one scent mark related to cannabis.
The industry-led review of the Cannabis Act will include regulatory standards, marketing, promotions and labelling as well as the potential for cannabis health products. Particularly, a relaxation on labelling restrictions and the introduction of cannabis health products would create new opportunities for cannabis producers to expand their IP protection.
Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.