Protecting Intellectual Property in the Cannabis Industry

Maier & Maier

The ever-growing cannabis industry has induced evolution in both the business and legal worlds. In the past few years, legal sales of cannabis for medical and recreational purposes have significantly increased and are projected to continue rising. The cannabis industry includes both plant-touching and ancillary businesses. Plant-touching businesses focus on breeding and cultivating the cannabis plant, extracting its compounds, and dispensing it. Ancillary businesses involve “everything but the plant”, i.e., cultivation supplies, extraction equipment, smoking accessories, as well as the legal, marketing, and financial aspects of the industry.

As the cannabis industry booms, tensions between state and federal law have been created. While more and more states have legalized the medical and recreational growing, sale, and use of cannabis, federal law still forbids it. However, federal legalization may be looming, especially with the government being under Democratic control. Supreme Court Justice Clarence Thomas indicated, in a recent statement denying cert. for Standing Akimbo, LLC, et al. v. United States, that intrastate regulation of marijuana may no longer promote the Federal Government’s interests.

Ethical rules for attorneys, particularly in the IP world, also come into play. Patent Rule 11.102 (d) states that “[a] practitioner shall not counsel a client to engage, or assist a client, in conduct that the practitioner knows is criminal.” It is important for attorneys to know which ethical rule regime is followed in the state where they are advising a client regarding the cannabis industry. Some states, such as Virginia, are silent and follow along with Patent Rule 11.102 (d), while other states have explicit or generic carve-outs or ethics opinions regarding cannabis.

When it comes to prosecuting cannabis-related patents, it is important to be informed about Federal law. The USPTO has issued cannabis-related patents in the past; the US government has upheld these patent rights, indicating no ethical issues for attorneys prosecuting cannabis patents. The duty of disclosure is vital in prosecution, as there is limited cannabis-related prior art for examiners to consult. Initial USPTO access to relevant prior art also helps when it comes to enforcement of the patent.

To federally register a cannabis-related trademark, the use in commerce of the mark must be legal. There must also be compliance with the Controlled Substances Act regarding source of extraction and THC content. If the mark is being used for a drug, food, or beverage, it must comply with the Food Drug and Cosmetics Act.

With the differences and tensions between state and federal law and the ethical implications regarding the growing, sale, and use of cannabis-related products and technologies, it is vital to have a well-informed and experienced attorney to guide you, particularly in the prosecution and enforcement of patents for such products.

USPTO Deferred Subject Matter Eligibility Response (DSMER) Pilot Program to Launch February 1, 2022

Maier & Maier

A new Deferred Subject Matter Eligibility Response (DSMER) Pilot Program will launch at the USPTO on February 1, 2022. This Pilot Program is designed to address issues currently present in examination of applications for eligibility under 35 U.S.C. 101.

The Pilot Program will allow applicants to defer examination under Section 101, such that the application is first examined under all grounds of patentability under Sections 102, 103, and 112. Under the Pilot, applicants will first amend claims to overcome rejections under the more objective patentability standards of these Sections, which may also have the benefit of informing the examiner that the claims are eligible under Section 101 as well. Subsequent to examination under these Sections, the examiner will conduct an eligibility analysis under Section 101. It is intended that such an examination sequence will result in stronger, more reliable, and higher quality patents.

Participation in this program is by invitation only. The criteria for participating in this program are listed on the DSMER Pilot Program page of the USPTO website.

Maier & Maier Recognized in U.S. News “Best Law Firms” Rankings

Maier & Maier

 

Maier & Maier PLLC has been ranked as a top law firm for Patent Law in the latest U.S. News – Best Lawyers® “Best Law Firms” rankings. We are thankful for this recognition and our wonderful clients and esteemed colleagues who made this success possible.

Additional Filing Fee for Non-DOCX Format Delayed Until 2023

Maier & Maier

An additional filing fee for any nonprovisional utility patent application filed under 35 U.S.C. 111, including continuing applications, that are not filed in DOCX format was set to take effect on January 1, 2022.  However, on November 22, 2021, the USPTO issued a final rule delaying the effective date of the new fee until January 1, 2023.  The reason for the delay is to give both the USPTO and applicants more time to adjust to DOCX filing procedures and to address known issues.

United States Patent and Trademark Office Expands Prioritized Examination (Track One) Program

Maier & Maier

The United States Patent and Trademark Office (USPTO) has further expanded their Track One prioritized examination program by increasing the annual limit on accepted requests. Previously, the USPTO only accepted 12,000 Track One requests per fiscal year, but this announcement increases the limit to 15,000 requests per year.

Track One expedites the patent prosecution process by allowing applicants to receive a final disposition (such as a notice of allowance or final rejection) of a patent application within twelve months from the date of the Track One request.

This is an important development, since Track One allows applicants to avoid lengthy prosecution with less requirements than other prioritized examination programs. An application under Track One typically receives a final disposition in under six months on average. Non-track one applications, however, don’t even receive a first office action for over 16 months, and remain pending for an average of 23.2 months.

At Maier & Maier we take pride in developing sophisticated patent portfolios for our clients and are well equipped to navigate and take advantage of the Track One, Patent Prosecution Highway, or other programs offered by the USPTO.

U.S. District Judge Alan Albright Provides Informative Update at the 2021 IPO Annual Meeting

Maier & Maier

Judge Alan Albright assumed the bench in September of 2018 and has quickly made the Western District of Texas a premier venue for patent litigation. 24% of all patent cases filed so far in 2021 were filed in the WDTX, up from just 3% of patent cases filed in 2018. This significant increase in filings is mainly due to the unique rules Judge Albright implements in all his patent cases.

In a speech this morning to the annual meeting of the Intellectual Property Owners Association, Judge Albright emphasized his firm belief that intellectual property is a vital component of our country, and that he therefore has a personal duty to be a fair judge. Judge Albright believes he can accomplish this by providing clear rules which lead to efficient resolutions, thus saving valuable time and costs for all parties to a dispute. Lawyers and their clients can both benefit from Judge Albright’s process which provides certainty and predictability to what can otherwise be lengthy and expensive trials.

Judge Albright prides himself on creating a patent dispute resolution system where a Markman hearing is typically reached within 8 months and a trial 14-16 months after that. Judge Albright has had twice as many Markman hearings as any other Texas division- including 40 in just this past summer.

The COVID-19 pandemic has not diminished WDTX’s efficiency. Instead, Judge Albright took advantage of the flexibility and transparency of Zoom. Hearings taking place over Zoom save time and money for both parties and can also give the public immediate access to the hearing. Anyone can listen to a patent trial in Judge Albright’s court (except for certain confidential portions, such as during the damages stage). Access to the Judge’s hearings can provide a major insight to understanding how the Judge will handle certain issues, providing even more predictability for the parties as well as useful strategies to take advantage of.

The Maier & Maier litigation team is well equipped to take advantage of Judge Albright’s procedures, which allowed us to settle a recent case in just 43 days from the filing of the complaint. By monitoring Judge Albright’s cases and other trends in the case law, Maier & Maier continues its track record of successful patent cases in the Western District of Texas.

 

Stephen Kunin Recognized by The 2022 Best Lawyers in D.C.

Maier & Maier

Maier & Maier partner Stephen Kunin is once again recognized as a top lawyer in the Intellectual Property field.  The 2022 Best Lawyers in D.C. publication has recognized Mr. Kunin for his work in Intellectual Property.

Maier & Maier prides itself on the ability to provide top tier service and relevant expertise to each of its clients.  Mr. Kunin is a shining example of the professionalism and successful track record that Maier & Maier brings to every engagement.

The complete publication of The 2022 Best Lawyers in D.C. can be viewed here.

Maier & Maier Drives Favorable Result at the Trademark Trial and Appeal Board (TTAB)

Maier & Maier

The Maier & Maier litigation team successfully defended its client’s right to pursue trademark registration for its prominent jewelry brand, SAUER.  In April 2021, Opposer Nextten Stauer filed an opposition proceeding challenging two of Amsterdam Sauer Joalheiros Ltda.’s (“Amsterdam Sauer”) trademark applications for the marks SAUER and SAUER ESTD 1941.

The opposition proceeding challenged the applications on the basis of priority and likelihood of confusion.  Representing Amsterdam Sauer, Maier & Maier denied these allegations and used a sound defensive strategy to drive an early and favorable result for Amsterdam Sauer.  As a result, the Board dismissed the opposition against each application with prejudice on September 10, 2021. With this win, the Maier & Maier litigation team adds to a series of successful outcomes for our clients, efficiently earning favorable outcomes at the TTAB as well as in district court, at the PTAB, and before the ITC.

Maier & Maier Wins Contested Institution Decision for Petitioner in Inter Partes Review

Maier & Maier

The Maier & Maier litigation team scored another victory at the Patent Trial and Appeal Board (PTAB), securing an institution order on behalf of the Petitioner, Eve Energy Co., Ltd. (“Eve”).  Despite Patent Owner Varta Microbattery GmBH’s Patent Owner Preliminary Response, the PTAB has determined that Maier & Maier, on behalf of Eve, demonstrated a reasonable likelihood that it will prevail with respect to at least one of the challenged claims.

On behalf of Eve, Maier & Maier challenged claims of U.S. Patent No. 9,496,581 on obviousness grounds.  Maier & Maier’s strategic use of testimonial evidence appears to have greatly benefited its position, while the Patent Owner Preliminary Response was limited to attorney argument without testimonial evidence.  In reaching its decision, the PTAB also agreed with Eve’s asserted level of ordinary skill in the art and Eve’s assertions regarding claim construction.

On August 9, 2021, the PTAB ordered that the inter partes review be instituted for all challenged claims.

If you or your company need similar assistance, please contact Maier & Maier’s litigation team here.

Arthrex: Supreme Court Upholds PTAB Judges

Maier & Maier

After facing extreme uncertainty at the Federal Circuit, the Patent Trial and Appeal Board’s (“PTAB”) judges have avoided calamity as the Supreme Court upheld their appointment process as constitutional in Arthrex v. Smith & Nephew. In their final decision, the Court held that while their appointment was upheld, the review process for their decisions was not and remanded the case down to the acting USPTO Director for further consideration.

The case began in an inter partes review proceeding at the PTAB and was appealed to the Federal Circuit on the basis that the Administrative Patent Judges comprising the Board are principal officers, who need Presidential appointment with the advice and consent of the Senate. This was premised on the lack of review their decisions receive from the USPTO Director, who is a duly appointed principal officer. According to 35 U. S. C. §6(c), “only the Patent Trial and Appeal Board may grant rehearings”. By insolating the APJs from Director’s review, Arthrex argued that they were converted to principal officers and their appointment was unconstitutional.

At the Federal Circuit, the panel agreed. Because the review process vested the APJ’s with power that exceeded that of an inferior officer, their appointment by the U.S. Secretary of Commerce was insufficient to satisfy the constitutional requirement. To cure this, the Federal Circuit declared that the tenure provision of the APJ’s was unconstitutional. This allowed the USPTO Director to fire them at their discretion and imbued the Director with a form of review over their processes. By giving the Director this authority, the Federal Circuit believed the APJ’s were satisfactorily inferior officers and their appointment could be upheld.

After the denied en banc rehearing, the Supreme Court disagreed in a splintered decision by the Justices. The opinion of the Court was authored by Justice Roberts and joined for Parts I and II by Justices Gorsuch, Alito, Barrett, and Kavanaugh. The crux of the decision rests on the review process itself being unconstitutional and curing it by remanding the case to the Director for their constitutionally mandated authority to review. As the Court explains, the statute “is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the PTAB on his own. The Director may engage in such review and reach his own decision.”

By striking the limitation on the Director, the Supreme Court has upheld the validity of the PTAB and its proceedings and prevented what could have been an extreme period of uncertainty for patent owners with the review process in total flux.

If you have any questions or concerns about how this or any other recent news may affect your portfolio or interests, please reach out to one of our attorneys here.