Not too long ago I was at a party where an acquaintance, upon hearing that I was studying intellectual property in law school, addressed me with a slightly tipsy and decidedly confrontational “you can’t own ideas, man!” At the time, I just smiled and prevaricated. It is true, though. You cannot own ideas. Intellectual property law is built on that very concept. There are some fine distinctions and clarifications, and certainly some gray area, but that’s the lawyer’s bread and butter. Intellectual property is like a contract with the government, and all contracts require both sides to gain something (‘consideration’). The commonwealth has generally concluded that there are certain protections worth granting for the greater public good and this is where a debate on the merits of intellectual property finds footing. We should ask what, exactly, do the rest of us get out of affording some entity protection of their copyright, trademark, trade secret, or patent?
A patent, for example, gives the inventor a few temporary rights, essentially to exclude others from making, using, selling, and importing the invention in the United States. Thomas Jefferson wrote that “the exclusive right to invention [i]s given not of natural right, but for the benefit of society” and highlighted “the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not.” Exclusive rights grant a monopoly of sorts, and a government-protected monopoly without a very important public interest being served would be embarrassing. For example, the Post Office is a monopoly that serves the commonwealth’s need for delivery of mail. But what concomitant need does granting a patent serve?
The United States Patent Office (USPTO) has been receiving applications for patents on strains of cannabis. This could be because a few states have legalized recreational use of cannabis or because the majority now supports legalization. Certainly, the projections of tens of millions of dollars of potential revenue will interest businesses and investors. But cannabis is federally illegal under the Controlled Substances Act. Can the USPTO even grant a patent on something illegal? More importantly, why should the USPTO grant these patents? There are valid arguments for both sides, but ultimately the USPTO should grant these patents because whether or not those patents can be enforced is a separate question for a separate agency.
In order to patent something the inventor must provide a description of the invention that would give someone familiar with the material the ability to actually make the invention. This “enabling” for a “person skilled in the art” is part of what the public gets. When your temporary exclusive rights run out, we can all take advantage of your clever new invention. Money made during the exclusive period works as a reward for your inventive mind as well as incentive for the rest of us to get out there and innovate.
Among other requirements, an invention must be “useful” to be eligible for a patent. Just about anything can be “useful” in one application or another, but what about uses that society would not want? Imagine Ted Kaczynski comes up with a cunning new way to disguise, package, and deliver explosive devices. It seems patent, so to speak, that there is little “useful” about this invention. Justice Story, better known for the Amistad case, posited that “a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention.” Further, Justice Story indicated that “whether [the invention] be more or less useful is a circumstance very material to the interests of the patentee, but of no importance to the public.” An invention can be “useful” for patentability purposes but have very little practical use. This doesn’t matter much to the rest of us because, as Justice Story put it, it “will silently sink into contempt and disregard.”
Courts have used Story’s reasoning to deny “useless” patents, usually of gambling devices or inventions to facilitate fraud. Courts, over time, have shifted away from the sticky issue of morality and generally look toward “usefulness” with a pretty open mind. In fact, the Federal Circuit explicitly stated that “years ago courts invalidated patents on gambling devices on the ground that they were immoral . . . but that is no longer the law.” Juicy Whip, Inc. v. Orange Bang, 185 F.3d 1364 (Fed. Cir. 1999) (Citations omitted, emphasis added).
In Juicy Whip, the invention was “designed to deceive customers by imitating another product and thereby increasing sales of a particular good.” That court held that the “utility” requirement in the Patent Act of 1952 “[wa]s not a directive to the Patent and Trademark Office or the courts to serve as arbiters of deceptive trade practices.” Further, the court pointed to 42 U.S.C. § 2181(a), which revokes all granted patents and denies patentability to anything “useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.” Essentially, that court said potentially harmful uses of inventions are not the purview of the patent office and if Congress wants something specific barred from patentability, they will pass a law to that effect.
Now you’re probably thinking “wait a minute, what about our hypothetical patent application by Kazcynski? Surely we, as a society, still draw the line somewhere?” Of course we do, it’s just not the Patent Office’s job. For example, the Federal Circuit in Juicy Whip cited to In re Watson, quoting “it is not the province of the Patent Office to determine, under section 101, whether drugs are safe.” Other agencies are responsible for safety, the FDA in that case. Cannabis is federally illegal, but enforcing that aspect of the plant is the purview of the DEA, not the Patent Office.
The Supreme Court has held that “Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted.” Generally, it seems that a patent on an invention with dubious merits will stand (at least with regard to ‘utility’) even if you might not be allowed to use (‘practice’) it in a given jurisdiction. Individual states can -and do- determine for themselves how best to enforce cannabis possession, growth, distribution, sales, etc. The Patent Office was not intended as an enforcer of federal laws. Still, cannabis is federally illegal.
A plant can be patented. Plant applications like this application for “Midnight,” a strain of cannabis with 1:1 ratio of Tetrahydrocannabinol (THC) to Cannabidiol (CBD), are curious because possessing one is almost always in violation of the Controlled Substances Act. While many agree that both the courts and the USPTO have abandoned Justice Story’s observed limitations, the Federal Circuit in Juicy Whip does leave some room for denying a patent application if it could not be put to legal use. Specifically, the Juicy Whip court cited Fuller v. Berger, 120 F. 274 (7th Cir. 1903) which would deny an invention “incapable of serving any beneficial end.” Juicy Whip also quoted a much more recent case, clarifying that “the claimed device must be totally incapable of achieving a useful result” and the “test for utility” is “not merely that the device has been used for pernicious purposes, but that it is incapable of serving any beneficial end.” Fuller referenced the Colt revolver and its inherently dangerous nature, then advocated that an invention is useful if it can be used “to accomplish a good result, though in fact it is oftener used (or is as well or even better adapted to be used) to accomplish a bad one.” The question, then, is can a cannabis plant accomplish a good result in spite of its federal status?
There may be some plausible legal use for, say, handcuffs that administer electric shocks, even if torture is the first use that comes to mind. That application has expired, but it’s an example of an invention with questionable “uses.” Is an invention that has no legal use incapable of serving any beneficial end? Granting a patent is not a guarantee from the government that you can use, or ‘practice,’ it. A drug might be patented but be declared unsafe by the FDA, or the FTC might protect consumers from a deceptive invention. Our laws are malleable, subject to review and change. Cannabis being legal or not is also changeable. In fact, legislators are currently working on changing cannabis’ legal status.
What if an inventor during alcohol prohibition created an efficient and safer process to isolate ethanol but was denied a patent? One amendment to the Constitution later, that invention has legal applications. Surely this is some injustice to the original inventor, society not upholding our end of the contract. Also, if we legalize liquor, don’t we want more efficient and safer methods of production? On the other hand, patent applications are public domain, so an application for an illegal invention by definition enables others to make it. (Though I think it is an unlikely criminal who peruses patent office materials in hopes of some improvement to their criminal empire).
If the USPTO does grant cannabis-related patents it will likely encourage more applications of this kind. One of the effects of decriminalization is increased awareness and understanding of cannabis and cannabis products. Cannabis consumers trying to create “butane hash oil” (BHO) have been increasingly blowing themselves up. Presumably this is because more people are aware of BHO in the first place. However, the public will subsequently become more aware of the dangers and perhaps less likely to engage in those methods. Also, people may invent and patent safer and more reliable methods or machines to produce BHO.
An “illegal” invention could be safer than previous technologies, and could further public health concerns while ostensibly subverting federal law. Consider a particular strain of cannabis with high CBD and low THC that, due to the differences in those active substances, may have medical uses without the psychoactive effects of cannabis. We should encourage such limited uses and developments of a drug in the same way that we encourage it for other scheduled but better known drugs.
Certain inventions, such as the physically impossible, provably lack use, but patents should not be denied for current illegality. Certainly some patents have been granted for substances derived from cannabis plants, which means the inventor was working with those plants – a fact that was probably not overlooked by the Patent Office. Extending that to a patent on the plant itself is a small step. Also, cannabis has some utility, either in the present sense in states where cannabis has been decriminalized, or in the possible future of federal decriminalization. If that isn’t enough, society can still benefit from increasing knowledge in the public domain while relying on other agencies, such as the DEA or, if legalized, the FDA, to enforce any application of a patented cannabis strain.