Law Times

Law Times • sepTember 28, 2015 Page 9 www.lawtimesnews.com Medical marijuana Can you patent pot brownies? BY YAMRI TADDESE Law Times W hen the Supreme Court of Canada considered re- cently whether medical marijuana users could consume cannabis in the form of cookies or brownies, its response was a unanimous yes. Does that mean pharmaceutical compa- nies with a licence to sell medical marijuana can start patenting pot brownies? "There's no moral prohibition on patenting inventions in Can- ada," says John Norman, a patent lawyer who advises pharmaceuti- cal companies at Gowling Laf leur Henderson LLP. "So there's nothing that would prevent anybody from patenting, potentially, marijuana brownies," he adds. "However, the big caveat is you can't patent a product in Canada that isn't new and inventive." In other words, whether someone can patent a hash brownie depends on whether it's meaningfully different from the kind anyone with an oven can bake. "It has to be new, it has to be in- ventive, and it has to have useful- ness," says Norman. "New means it has to not have been done before, and the fact is this has been done for at least 30 to 40 years. It wouldn't be new or novel as we call it." To claim the brownie is from a unique recipe won't cut it, says Teresa Reguly, a patent lawyer at Torys LLP. Even if that particu- lar brownie product hasn't been available until now, a person could get caught up in the obvi- ousness test for patenting a prod- uct, Reguly adds. The marijuana ingredient is likely a known strain, and the test for distinguishing a fairly typical brownie recipe from another is steep to the point of impossible, Reguly notes. "There are brownie recipes all over the Internet, and if you make a minor change in the amount of f lour or sugar that you add, that usually is not enough to get around obviousness," she says. In the test for obviousness, the absence of an exact replica isn't enough. If it would be obvi- ous for anyone to mix marijuana with brownies, the test isn't met, Reguly notes. But theres's still hope. If some- one came up with a new type of marijuana-infused brownie that has some additional benefit — perhaps an ingredient that helps with increased absorption of the tetrahydrocannabinol, the main active compound in cannabis — "that would potentially be pat- entable," says Norman. The tweak to the product would have to be one that's not obvious, says Reguly. "You play around with the ingredients in that recipe and you might be able to come up with a unique formulation that's improved over what's out there. "I do a lot of work for drug companies and a lot of times that's what it is: They're taking a known medicinal ingredient . . . but they're trying to figure out ways . . . to get to the source of in- f lammation quicker or to have it be sustained, long lasting." As for the medical marijuana industry itself, there's currently little appeal in patenting prod- ucts such as pot brownies, says lawyer John Fowler, who's also the president of Supreme Phar- maceuticals Inc. "What we're likely to see in the near term is more intellectual property being developed around the apparatuses and the processes of extraction more than the [ex- tract] itself," says Fowler. "What most companies I imagine are doing or what smart companies should be doing is looking at how they can develop IP around improvements to the equipment used in extractions and the process used for extrac- tions. I'd guess that's the low- hanging fruit on the IP side of things." Before we start seeing the pat- entability of specific marijuana products for pharmaceutical use, Fowler says the more immediate issue is "laying the groundwork" around marijuana growth and the extraction process. "What that means is bringing marijuana breeding, so the plant- side aspect, up to par with what we see with the rest of the agricultural or pharmaceutical industries," he says. Many marijuana growers do it as "a hobby business," he notes, adding the process could benefit from more scientific and sophisti- cated methods. Companies could also look into new strains of mari- juana that may be compatible with specific ailments or juvenile users, he suggests. Legal issues around selling medical marijuana products aside, there's also "something con- ceptually a little odd about taking a health product such as [medical] marijuana and putting that into junk food," says Fowler. It's also important to ask if patenting products such as mar- ijuana-infused treats outweighs the costs, according to Norman. "Getting a patent is not cheap," he says. "Very quickly, you real- ize that unless this is a product that's going to do very well, the cost of patenting is going to sort of over engulf the profits you're going to make." Jurisdiction also matters, ac- cording to Norman. "Getting a patent in Canada is one thing; mostly, you want to get patents in the U.S.," he says, noting the larger market south of the border. LT FOCUS Let the experts help you to narrow your search and save you research time. Canadian Patent Reporter has been Canada's leading intellectual property law report since 1942. This renowned resource, available online and in print, includes precedent-setting intellectual property law judicial and board decisions from across Canada. This publication provides practitioners with the leading decisions on patent, industrial design, copyright and trade- mark law. Topical catchlines in bold print show the key issues involved in each decision. 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Price(s) subject to change without notice and subject to applicable taxes. 00227MK-A47898 Available risk-free for 30 days Order online: www.carswell.com Call Toll-Free: 1-800-387-5164 In Toronto: 416-609-3800 Alternative ways of consuming medical marijuana have been in the news lately with a recent Supreme Court ruling on the issue. Photo: mikeledray/Shutterstock Big changes for IP as Nice classification takes effect BY YAMRI TADDESE Law Times L awyers registering a trademark on their clients' behalf this fall will likely need to change their routine. As Canada harmonizes its trademark system with much of the developed world, law- yers and trademark agents will be registering trademark applications according to the inter- nationally recognized Nice classification sys- tem. Named after the French city of Nice, the clas- sification system contains 45 classes of goods and services. Class 33, for example, is for alco- holic beverages except beer, whereas Class 25 is for clothing, footwear, and headgear. Once the system comes into effect this fall, new trademark applications for goods and services must fall under one or more of those classes. "The adoption of the Nice classification by Canada will help businesses searching the Ca- nadian trademarks register to find potentially confusing marks owned by competitors in their industry or field of commercial activity," the Canadian Intellectual Property Office said in the summer. "Since the classification system exists in mul- tiple languages, businesses can save significant translation costs." It added: "Implementation of the Nice classifica- tion will help applicants and the agent community with the transition from the current trademarks regime to the new provisions — coming into force with the accession to the Nice agreement, the Sin- gapore treaty, and the Madrid protocol." The adoption of the classification system " just makes sense," said Brian Isaac. A lawyer at Smart & Biggar/Fetherstonhaugh, Isaac spoke to Law Times about the change shortly before his death last month. In a tribute to Isaac fol- lowing his death, the firm remembered him as one of Canada's leading intellectual property lawyers who was a "rare breed" in the field with a practice spanning several areas. "The world uses it, and we're one of the last countries to adopt it," Isaac told Law Times in August. For lawyers, the biggest change will be learn- ing the classification system, said Isaac. In ad- dition to that learning curve, another concern is the prospect of increased fees associated with the adoption of the new system. "The government has maintained that this was not done for the purpose of increasing fees, and I believe that's true. But once the Nice clas- sification system is in place, it's a relatively easy thing to charge a fee per class or a fee for the first See New, page 10

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