"Evolving Like a Tsunami": Eileen McMahon and Michelle Nelles on IP Strategies for the Emerging Cannabis Industry

Partner Eileen McMahon and Counsel Michelle Nelles recently weighed in with the Law Times for an article on the importance of plant breeders’ rights and trademark compliance in cannabis IP strategies.

Eileen stated that even though there are considerable advantages that come along with them, “many companies don’t realize they can acquire plant breeders’ rights for cannabis.”

“There’s nothing in [the Plant Breeders’ Rights Act] that says that plant breeders’ rights are available for all plants except for cannabis.

“Scientists can cross-breed or genetically engineer new varieties of cannabis, just like they do for other crops,” she said.

Eileen went on to explain that in her experience, “businesses are more likely to pursue patent rights instead of plant breeders rights.”

One of the reasons behind this is that “it can be more difficult to enforce plant breeders’ rights due to many loopholes,” she explained.

For this reason, Eileen commented that the rights can be hard to enforce: “[b]usinesses involved in research and development are more likely to pursue patents than plant breeders’ rights.”

However, the “patent must be for something new or inventive; for example, a type of cannabis that is resistant to fungi or has a longer growing season.

“The key is proving the plant is new, inventive and useful,” she clarified.

Eileen also explained that patents are available for extraction methods, products and way of making such products. For this reason, she encouraged businesses to “keep a close eye on emerging trends in the market.

“The cannabis industry is evolving like a tsunami,” she added.

Finally, in consideration of the industry’s rapid growth, she advised businesses to “choose an intellectual property strategy that fits their business model.”

Michelle focused more on the impact of Health Canada’s packaging regulations and how they would affect companies’ abilities to brand and market their products. She informed the Law Times that “[a] lot of people are applying for trademarks that cover cannabis, but they absolutely have to take into account the very significant regulatory scheme that they will have to comply with in their trademarks.”

Eileen, Michelle and other members of our team have written extensively about the latest developments in the cannabis industry. Read more of their insights on our Emerging Trends in Cannabis Page.

Head to our practice pages to learn the latest from our Intellectual Property, Food and Drug Regulatory, and Trademark practices.