Global IP Matrix - Issue 7

Cannabis and IP?
The capable art of creating cannabis IP rights
is evolving. It focuses on patent protection for
novel processes and products, the protection
of related trademarks, trade secret protection,
generating the very necessary health
registration permits that enable the products to
be imported into a given country where such
a requirement must be met, and protection
via contracts of all sorts when faced with
particularly important know-how.
In general, an invention based on cannabis
must comply with the patentability
requirements: be new, useful, and nonobvious.
Therefore, cannabis-based patents can be
for GMO cannabis, new strains of cannabis
plants, unique cannabis cultivation methods,
for the extraction and processing of cannabis
plants, cannabis products (cannabis oils and
extracts, cannabis beverages, edible food
products, animal products, etc.), equipment
for the processing of cannabis, medical uses
for cannabis, such as treatments for a disease
or a particular disorder, the possibilities are
never-ending. The industry is letting their
imagination flow freely!
We usually see first-hand that companies must
do their mandatory due diligence before using
any type of IP rights they believe they “own,”
creating possible vulnerabilities and where
they may face infringement cases.
The patent protection process of a cannabis
product or registering a trademark for a
cannabis product is the same as in the case of
other types of products. However, the industry
is facing a boom, and the number of patent
cases worldwide is increasing, where, for
example, patents may overlap and generate
infringement cases. In the USA, we see a first
patent infringement case already; it involves
two companies: United Cannabis Corporation
v. Pure Hemp Collective, Inc. United Cannabis
claims that Pure Hemp Collective has
infringed certain patent claims on cannabis
extracts and their method of preparing and
using such extracts. This case will likely set the
future of the cannabis industry litigation in the
USA, and this same scenario will be faced in
different countries as the cases start to arise.
When a company is on edge protecting their
creations and know-how, this makes a genuine
difference when faced with competitors and
in commercialising their products. Some
companies choose to license their IP rights
while others don’t. This is all dependent on the
business model.
Latin America and
the Caribbean?
As the push for legalisation at home and
abroad grows, cannabis is garnering significant
attention from investors, manufacturers, and
researchers. Despite the plant being illegal
in many jurisdictions just alone in the U.S., a
total of 33 states have legalised cannabis for
medical use.
In hand with this, cannabis for medical
purposes has received the green light in several
Latam countries (Mexico, Brazil, Colombia,
Argentina, Peru, and Chile.)
For instance, CBD products are legal in
Colombia as long as they contain less than 1%
THC in dry weight. In general, the community
seems to be embracing the health benefits of
this product; however, there are concerns as to
the high prices of such products that remain
inaccessible for most regular people.
Mexico has created several commercial
licenses for CBD products where the products
must contain less than 1% THC content to be
approved for commercial use.
Cannabis in Costa
Rica:
Currently, only the consumption and personal
cultivation for medical or scientific purposes is
decriminalised, so marijuana, as such, is still
considered an illicit drug.
Nonetheless, in recent weeks Costa Rica has
been one of the Central American countries
that are looking at a Bill aimed to regulate
medical cannabis and hemp. And this is indeed
a promising industry, especially during such
difficult times that the world is navigating. It
is seen as a source of income that promises to
rectify the economy of this country.
The Costa Rican government has manifested
its support to the production of hemp and
based on this a company by the name of ‘Micro
Plantas de Costa Rica S.A,’ and the CATIE (The
Tropical Agricultural Research and Higher
Education Center) have reached an agreement
that promotes the economic development of
the Costa Rican agricultural sector, generating
value in production processes through
innovation and knowledge derived from
research, where the objective is to generate a
prototype for the different hemp processes,
within the framework of a relationship between
a private company, academia, investors and
other interested institutions, taking into
account the capabilities of the different actors
to be able to develop a successful project at the
country level, which in turn can be scaled to
13 other countries in the region and that also
benefits the rural population by bringing in
new technologies.
In tandem with this, before the Legislative
Assembly of Costa Rica lays Bill no. 21,388,
which seeks to legalise the medical production
of hemp and cannabis in this country. Although
the word cannabis almost immediately converts
this project into a polemic one, it is also
promising in that it could effectively reactivate
the local economy into the production and
exportation of products based on cannabis and
industrial hemp.
The current unemployment rate in this
country has reached a whopping 11.4%, and
this cannabis-hemp industry would become a
new source of employment for many people.
According to various studies, it seems Costa
Rica possesses the agroeconomic conditions
that permit the cultivation of cannabis and
hemp at an industrial level. This is attractive
to the industry worldwide as a promising
substitution for several industries that are
currently on the low.
Currently, medical cannabis is legal in 21
countries, with an overall market composed
of 771 million people. Out of these, 51% live
in countries that allow the importation of
medical cannabis. This data was provided by
Deloitte Canada in 2017, and if Costa Rica
passes this Bill into Law, we will also be facing
a positive future!
The Bill proposes a licensing system for the
extraction, laboratory, and cultivation in
order to limit the production phase. It aims
at a pharmaceutical industry in this country,
making Costa Rica a development potential
and creating a cluster of pharma companies
that wish to develop this industry in areas such
as food, drinks, clothing, medicine, and others.
Currently, there are 13 countries worldwide
that allow the importation of cannabis
products for medical use. In Latin America,
Mexico, Jamaica, Colombia, and Chile would
be the most favorable destinations to export
from Costa Rica.
Sailing Beyond
Paris and Berne
by Mladen Vukmir, Second Vice-President – ECTA
www.ecta.org
Mladen Vukmir is the Second
Vice-President of ECTA and a
member of the ECTA Board. He
is an IMI Certified Mediator,
past member of the INTA Board
of Directors, past INTA ADR
Committee, and INTA Brands
& Innovation Committee Chair
as well as past President of the
Croatian AIPPI Group.
“We cannot become
what we need to be by
remaining what we are.”
Max De Pree
Modern societies are witnessing the changing
role of law upon accelerated growth in the
quantity of information, modifications of
knowledge structures, and information
processing possibilities. Without the rule of
law and the role of intellectual property within
the legal system, humanity would never have
reached the level of growth that led it into the
most prosperous part of its entire history.
the legal system provides for one of their
most important traditional roles – to serve as
guidance to their societies.
The very central pillar of the traditional role
of the law came under pressure in modern
complex societies, as the stability it used
to provide to every society ruled by law,
became the cause of instability under the
new conditions. In complex systems, such as
our modern societies increasingly are, any
point of stability is bound to increase the
overall instability of the system, just as a rock
protruding through the foaming whitewater
does add complexity to the flow. Fewer points
of stability in a volatile environment might
increase the smoothness of its state.
changes in forms of human creativity. Our
societies did not adjust easily, nor did they yet
manage to cope with the changes profoundly
enough to escape the stress. Patching up the
systems designed for the different environment
might not be a path to the greater efficiency of
today’s environment.
Looking back…
In the last two hundred plus years, our societies
have demonstrated certain difficulties of
grasping the nature of the intangible creativity
and trying to form a new form of property
right over it. It could be said that even though
a couple of centuries have passed since our
As an IP attorney, my focus is that difficult
means it is possible if crafted in a very artful
manner. Cannabis companies must carefully
patchwork laws and regulations as if walking
on thin ice and take extra precautions. Having
the right lawyer on board is key.
The ideal scenario would be for medical
cannabis to be legalised worldwide, thus
eliminating the blockages the industry
currently faces; however, this may happen
with time. In the interim, doing proper duediligence
and clearing the ground may slow the
process in a sector that is growing by leaps and
bounds, but will be worthwhile in the long run.
Nowadays, however, many observers note that
our legal systems that were designed to produce
consistent results find themselves increasingly
at odds with the needs of contemporary
societies to have diverse outcomes available
in order to satisfy the wide variety of business
models and relations that coexist. Accordingly,
our legal systems are coping with the increased
differences in factual patterns that complex
contemporary societies are generating. The
resulting inconsistencies and the inherent
slowness of the legal process are increasingly
at odds with the fast-moving pace of the
economy and technology. Consequently, we
are witnessing increased hardships with which
Intellectual property
systems and functions
Different challenges of this kind are easily
visible if we focus on intellectual property
systems. Throughout the last century and a half,
the functions of copyright law and industrial
property law have experienced unprecedented
changes in their fields of application. Since
the digitalisation started and global digital
networks enabled our economies to switch to
the digital domain, we are witnessing profound
artists and businesses started relying on their
intangible assets, our societies are on many
points still struggling with fully accepting the
underlying concept of intangible assets. In the
meantime, and without fully embracing the
intangibles, yet another set of very different
intangibles emerged as a perceived asset. Data,
intangibles that are not created by human
creativity, have joined the club of the most
valuable assets for the modern industries, and
in the form of privacy protection is gaining in
profile among the individuals.
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