Cannabis Patents: The Potential Power of the PCT Application

24 Apr Cannabis Patents: The Potential Power of the PCT Application

Last week, Canadian corporation Yield Growth Corp. announced that its subsidiary, Urban Juve Provisions, filed a Patent Co-operation Treaty Application (PCT Application) entitled “Cannabis Root Extract, Method of Manufacture, Method of Use.” The PCT Application claims priority to eleven U.S. patents filed in the last year by the company and contains claims to a method of manufacturing cannabis root oil, as well as use of that oil as an active ingredient in various formulas for cosmetics and therapeutics. Penny Green, CEO of Yield Growth commented in the announcement: “Topical products represent a huge opportunity in the cannabis industry. We intend to be a leader in the industry with our use of powerful ingredients like our proprietary hemp root oil combined with our expertise in global brands and international distribution.”

Yield Growth’s PCT Application can be used as a basis for obtaining this patent protection in over 150 countries simultaneously. As the cannabis industry rapidly develops, it won’t be surprising to see a rise in corresponding cannabis PCT Applications as well.

So, what is a PCT Application? It’s essentially a “placeholder” application that establishes a filing date for your invention, which can then be “nationalized” in any of the 150+ countries that are members of the PCT. It can be the first patent application you ever file, or it can claim priority to an earlier-filed application. The process generally looks like this:

1. You file the PCT Application. You will also designate an International Search Authority (ISA), which is the patent office that will perform an initial review of the claims in your PCT application.
2. Your ISA searches for prior art. Remember when we talked about prior art here? Your ISA will identify what it deems to be relevant prior art in an International Search Report (ISR). Your ISA will then issue a non-binding Written Opinion (WO) that contains its view on the patentability of your claims. (If you designate the U.S. Patent Office, it aims to issue the ISR and WO within 9 months of the PCT filing date if the PCT application is the first application, or 16 months from the priority date if the PCT application is a subsequent filing). If the WO is favorable, you can enter prosecution early in some jurisdictions. If the WO is not favorable, you can amend the claims at various points during the PCT process.
3. Your PCT application publishes approximately 18 months after the priority date.
4. Generally, within 30 months (longer in some jurisdictions) from your priority date, you will “nationalize” the application in the countries you desire. Note that there are sometimes substantial costs for translation preparation and application filings in each of your selected jurisdictions.
5. Each of your nationalized patent applications will then follow their own country-specific procedures for prosecution to grant. Your PCT Application itself will expire, and it alone cannot issue as an “international patent” (those don’t exist).

There are various benefits to filing a PCT Application instead of starting off with separate patent applications in each country, including deferral of costs and time constraints and the prior art that necessarily gets created when a PCT Application gets published. Circling back to Yield Growth, this was an effective and efficient way for it to ensure its eleven provisional patent applications in the United States are primed for globalization.  We’ll be monitoring its path through the nationalization process and report back on any cannabis-specific issues that may arise.

For more on cannabis patents, check out the following posts: