Protecting Cannabis IP: Viability of Cannabis Patents, USPTO Guidance on Trademark Applications, Copyrights

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Tuesday, October 27, 2020
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide IP counsel on the protection of cannabis IP. The panel will examine the current cannabis IP landscape and discuss the impact of the legality of cannabis on IP rights. The group will also address what the FDA's cannabis regulation means for IP and offer best practices for securing IP rights as the landscape evolves.
Faculty

Ms. Dalier focuses her practice on U.S. and international trademark clearance, prosecution, enforcement, and portfolio management for clients in a wide variety of industries, including pharmaceuticals, communications, electronics, machinery, manufacturing, software, entertainment, finance, fashion and foods. She has significant experience in trademark prosecution before the U.S. Patent & Trademark Office and Trademark Trial and Appeal Board proceedings. Ms. Dalier conducts due diligence reviews of IP assets, and counsels clients on mark and logo selection, packaging review, brand protection, expansion, and management. She also counsels clients on domain name matters, website review, and licensing matters. Prior to entering private practice, Ms. Dalier worked for more than seven years as a Trademark Examining Attorney at the USPTO.

Ms. Pelletier is experienced in patent litigation before the federal courts and the International Trade Commission, post-grant trial and reexamination practice before the U.S. Patent and Trademark Office, and appeals before the U.S. Court of Appeals for the Federal Circuit. Her clients include leading companies in the electronics, biotechnology, and software industries. She also counsels clients in emerging and regulated industries, including cannabinoid therapeutics. She uses her technical background in bioinformatics to prepare and prosecute patent applications as well as represent clients in district court litigation, Section 337 actions, inter partes review, post-grant review, covered business method review, reexamination, and interference proceedings in a variety of technology areas.

Dr. Sterling focuses her practice in the biotechnology and pharmaceutical industries, where she is involved in all areas of patent procurement, exploitation and enforcement. Her experience includes representing clients in over 70 inter partes review and covered business method proceedings, and in multiple patent interferences and reexaminations. Her practice also includes counseling clients on intellectual property strategy, including evaluating patent portfolios, e.g., for invalidity, non-infringement, freedom-to-operate and due diligence analyses, and she has assisted clients in devising design-around strategies for issued patents.
Description
In 2019, the USPTO departed from its longstanding position prohibiting registration of cannabis-related marks when it issued guidance for trademark applications of hemp-based goods and services. However, the legal status of cannabis impacts trademarks, which could be advantageous for those in federal compliance but problematic for those not in compliance.
Unlike trademarks, the legal status of cannabis is not relevant in the patent context. The number of patent applications for cannabis-related inventions continues to rise, and the USPTO is issuing an increasing number of cannabis-related patents. Last year, a federal district court upheld patent claims for liquid cannabinoid formulations, and the USPTO confirmed the patentability of claims relating to a cannabis-derived pharmaceutical. Also, cannabis patent portfolios have been critical pieces in several acquisitions.
For IP that is dependent on the legal status of the product, this could be a game-changer. As the cannabis industry grows, counsel needs to understand how best to protect the IP rights involved.
Listen as our authoritative panel examines the current cannabis IP landscape, including the USPTO cannabis trademark guide, recent decisions on the patentability and enforceability of cannabis patents, and the use of copyrights. The panel will also discuss the impact of the legality of cannabis on IP rights and what the FDA's cannabis regulation means for IP. The group will offer best practices for how to secure IP rights even as the landscape continues to evolve.
Outline
- The current cannabis IP landscape
- Trademarks
- Patents
- Copyright
- Trade secrets
- The legality of cannabis and its impact on IP rights
- FDA cannabis regulation
- Practical strategies for obtaining IP rights for cannabis-related goods and services
- Trademarks
- Patents
- Copyright
- Trade secrets
Benefits
The panel will review these and other vital matters:
- How is the legal landscape evolving for the protection of cannabis-related IP rights?
- What are the practical implications of legality questions related to cannabis-related goods and services?
- What are best practices for securing IP rights for cannabis-related products?
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