Cannabis Patents: Cutting Through the Haze of the IP Landscape

04/21/25 • 74 min

Patently Strategic - Patent Strategy for Startups

In this month’s episode, we’re getting high on innovation with a deep dive into cannabis patents!
As more and more states relax restrictions on both medical and recreational uses of marijuana and hemp, the U.S. cannabis industry is projected to reach $50 billion in sales this year and over $74.6 billion by 2032! This rapid growth is happening despite immense challenges brought on by a complex and conflicting web of legal disparities between federal and state laws. These legal challenges include limited access to financial institutions and the inability to transport products across state lines, but what about patents? THC – the primary psychoactive compound in cannabis – was deemed a Schedule One drug under the Controlled Substances Act of 1970. This is the most restrictive category for drugs in the eyes of the federal government. And unlike most other property rights, patents fall squarely within federal jurisdiction. So what does this mean for inventors in the space hoping to protect their cannabis-related innovations?

** Guest Host: James Gourley **

For the answer, we turned to *the* expert in this space. There have only been five or so cannabis patent infringement cases ever filed in the United States, and our guest host today has worked on two of them. James Gourley is a partner at Carstens, Allen & Gourley, LLP, and a registered patent attorney with the United States Patent and Trademark Office. James served on the Dallas Bar Association's Intellectual Property Section Board before moving to Denver. He is a member of the State Bar of Texas and Colorado and is admitted to practice in the U.S. District Courts for the Northern, Southern, Eastern, and Western Districts of Texas, the District of Colorado, the Fifth Circuit Court of Appeals, and the United States Supreme Court. James has been a pioneer cannabis IP law and brings incredible depth of expertise, based on first-hand experience, to our conversation.

** Episode Overview **

⦿ Cannabis at the molecular level, specifically THC and CBD, and how the subtle differences underscore the complexity of cannabis legality.
⦿ The present legal framework around cannabis and the challenges that come via a patchwork of conflicting state and federal laws.
⦿ Cannabis IP issues surrounding obtaining and asserting both patents and trademarks, including insights from the cases James has personally litigated.
⦿ Patent prosecution strategies to help ensure your rights are enforceable in a federal court.

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Let us know what you think about this episode!

** Guest Host: James Gourley **

** Episode Overview **

Let us know what you think about this episode!

Previous Episode

ParkerVision v. Rule 36: The Battle for Dignity and Due Process

If a court stripped away your property rights, wouldn’t you at least want an explanation? The answer is obvious, but the reality is appalling. The practice of revoking patent rights on appeal without explanation has been happening to inventors at the Federal Circuit Court of Appeals (CAFC) at an alarming rate. In over 43% of PTAB cases on appeal at the CAFC, inventors receive a single-word response – “AFFIRMED” – rather than an opinion. This practice is referred to as the application of Rule 36 and, in cases involving the PTAB, amounts to the seizure of property from an administrative agency without any reasoning provided by a constitutionally created Article III court.
Based on the findings of our guests today, who are taking this very issue up with the Supreme Court, Rule 36 violates clear statutory requirements, raises Constitutional questions, and defies a rich history of court precedent. Gene Quinn has said that this Federal Circuit Court practice is “placing America’s inventors under siege,” and friend of the podcast and former Chief Justice of the Federal Circuit, Paul Michel, has called this practice a “dereliction of duty” that “warrants immediate Supreme Court scrutiny.” Our guests this month – Jeff Parker, Amit Vora, and Juliette Fassett – are fighting hard to make that happen.

** Our Guests **

ParkerVision has filed a petition for a writ of certiorari with the Supreme Court and recently submitted a reply brief in an attempt to get the Supreme Court to take up this innovation-crippling practice. In the coming days, the justices are scheduled to discuss the petition in private conference, where they will vote on whether to take the case.
To help us unpack Rule 36 practice and what ParkerVision is hoping to do about it, Dr. Ashley Sloat and I have enlisted the assistance of the three people closest to this case and its implications:
⦿ Jeffrey Parker, CEO of ParkerVision – an absolute pioneer in wireless technology.
⦿ Amit Vora, appellate litigator at Kasowitz Benson Torres, representing ParkerVision in its petition for cert with the Supreme Court.
⦿ Juliette Fassett from the Fair Inventing Fund, advocating for inventors’ rights. Juliette is an inventor herself, with over 30 years of experience building consumer product companies.

** Referenced Links **

⦿ ParkerVision's Cert: https://www.supremecourt.gov/DocketPDF/24/24-518/331105/20241104163210189_No.%2024-_____%20Petition.pdf
⦿ Why Patents Exist w/ Professor Mossoff: https://www.aurorapatents.com/blog/why-patents-exist-with-adam-mossoff

Let us know what you think about this episode!

Next Episode

International Patents: Your Travel Guide to Foreign Protection

In today’s global economy, the importance of international patent protection cannot be overstated. Your invention could be conceived of with a workforce distributed across several continents. Your manufacturing could happen in Asia or India, while your products are shipped into and distributed from ports in the target markets of the largest economies across the globe. Would be competitors and infringers could be next door neighbors or perhaps across the pond. But as you’ll learn today, there is no such thing as an International Patent – no one global patent that protects you everywhere. Instead, patents are jurisdictional property rights. For example, a U.S. patent only grants the right to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities performed in Canada, Mexico, China, or anywhere else in the world. To restrict activities there, you will need a patent granted in each of those countries.
So, how do you choose where to file? How long do you have to decide? What pathways exist for filing internationally? How do you pursue international protection in an intentional, strategic, cost-effective manner that won’t break the bank? And what should you be thinking about now, while drafting your patent to set yourself up for the greatest odds of success once on the international stage?

** Episode Overview **

Dr. Ashley Sloat, Aurora’s very own international patenting tour guide, leads today's discussion with our all-star patent panel, traveling from the U.S. to Europe, Africa, India, East Asia, Australia, and everywhere in between, exploring the intricacies and nuances of ensuring your patent rights are protected everywhere it matters. Along the way, Ashley and the panel discuss:

⦿ Reasons for pursuing international protection.
⦿ How to choose locations with a cost-effective international strategy.
⦿ Foreign filing deadline and strategy pointers.
⦿ The most common pathways for foreign protection including, the Patent Cooperation Treaty, the Paris Convention, the European Patent Convention, Unitary Patents, and the African Regional Intellectual Property Organization.
⦿ Things you need to be thinking about well in advance, in terms of drafting your patent and the international dangers of public disclosure.
⦿ And even some considerations for how political happenings like tariffs, trade wars, and Brexit can impact your patent strategy.

** Mossoff Minute: A Friend to Inventors **
In this month’s minute, Professor Adam Mossoff discusses Secretary of Commerce Howard Lutnick's remarks at the National Inventors Hall of Fame Induction Ceremony, and what this positively signals for the near future of innovation policy.

Let us know what you think about this episode!

Patently Strategic - Patent Strategy for Startups - Cannabis Patents: Cutting Through the Haze of the IP Landscape

Transcript

Josh: [00:00:00] Good day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It's for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're getting high on innovation with a deep dive into cannabis patents.
Josh: As more and more states relax restrictions on both medical and recre